‘SINGER MANUFACTURING COMPANY, Petitioner, v.

HERMAN CRAMER.

(See S. C. Reporter’s ed. 265-286.)

Patents — primary invention — vertical double brace as support for sewing-ma¬ chine treadle — construction of claim — infringement.

cal double or cross brace cast in one piece as a support for a sewing-machine treadle can¬ not be deemed to have involved such an ex¬ ercise of the inventive faculty as to make the Cramer patent, No. 271,426, for a new and improved sewing-machine treadle, a primary one, and entitle the patentee to a liberal con¬ struction of his claim, where, at the time of his alleged invention, a vertical cross brace and a lower cross brace or tie rod were common adjuncts of sewing machines, and it was customary to support the lower cross rod or brace in the web of the legs of sew¬ ing machines, and to utilize the legs as bear¬ ings, and the employment of solid castings as bearings or supports for oscillating shafts where a fixed alignment was essential was a well-known method of machine construc¬ tion.

426, for the use In combination of a vertical double brace and a sewing-machine treadle provided with trunnions fitted to oscillate in such brace on bearings therein “substantially as specified,” must be deemed to cover only elements in combination having substantially the form and constructed substantially as de¬ scribed in the final specifications and shown in the accompanying drawing, where the Patent Office, after twice refusing to allow the patent because of certain prior patents, evidently was led to take favorable action because of the peculiar form of the de¬ scribed bearing when situated in a vertical cross brace, such as was shown in the draw¬ ing, with the described accessories.

patent, No. 271,426, for the use, in combina¬ tion, of a vertical double brace and a sewing- maehine treadle fitted to oscillate in the brace on bearings therein “substantially as speci¬ fied,” results from the employment of the device covered by the Diehl patent, No. 306,-

Note— On what constitutes infringement of patent — see notes to Royer v. Coupe, 36 L. ed. U. S. 1073, and Dashiell v. Grosvenor, 40 L. ed. V. S. 1025.

Upon the question what constitutes infringe¬ ment of patent; similarity of devices; designs; combinations ; machines; construction of pat¬ ent — see note to Royer v. Coupe, 36 L. ed. U. S. 1073.

192 U. S.

469, for improvements in sewing-machine stands and treadles, in which the treadle sup¬ ports, though serving the same purpose as the device described in the Cramer patent, are substantially different in construction.

[No. 18.]

Argued March 18, 19, 1903. Decided Febru¬ ary 1, 1901/.

ON WRIT of Certiorari to the United States Circuit Court of Appeals for the Ninth Circuit to review a judgment which affirmed a judgment of the Circuit Court for the Northern District of California entered on a verdict in favor of plaintiff in an ac¬ tion to recover damages for the infringe¬ ment of a patent. Reversed, and remanded to the Circuit Court for a new trial.

See same case below, 48 C. C. A. 588, 109 Fed. 652.

Statement by Mr. Justice Whites This controversy relates to an alleged in¬ fringement by the petitioner, a New Jersey corporation, of United States letters patent No. 271,426, issued to the respondent on Jan¬ uary 30, 1883, for “a new and improved sew¬ ing-machine treadle.” For convenience the petitioner will be hereafter referred to as the Singer Company and the respondent as Cramer.

The treadle device used by the Singer com¬ pany on its sewing machines, which it was charged infringed the Cramer patent, was covered by letters patent No. 306,469, dated October 14, 1884, issued to the Singer com¬ pany as the assignee of one Diehl.

The file wrapper and contents exhibit the following proceedings in the Patent Office re¬ specting the Cramer patent: The ‘original

application was filed on May 25, 1882, and was for the grant of letters patent to Cra¬ mer “as the inventor for the invention set forth in the annexed specification.” The specification and oath thereto read as fol¬ lows:

“1, Herman Cramer, of the city of Sono¬ ra, in Tuolumne county, in the state of Cal¬ ifornia, have invented certain improvements in a treadle, to be used in sewing machines, or other machinery where a noiseless treadle may be required, of which the following is a specification :

“My invention consists of the usual plat¬ form marked ‘A’ in Fig. 1 of diagram on treadle bar. The ends of said treadle bar, marked ‘B,’ are shaped like the letter V, and rest in socket in lower end of a brace

‘C,’ the socket being shaped, the brace

‘C’ cast in one piece, and the treadle bar and ol at form on the bar is also cast in one piece.

28 437

U. S., Book 48.

2GG-268

Supreme Court of the United States.

Oct. Term.

“The treadle bar rests in socket in brace ‘C,’ which is immediately above a cross brace usually in machines to keep them from spreading apart, the nut on end of cross brace is marked ‘D.’ Letter ‘M’ imme¬ diately beneath cross brace and treadle bar is an oil receiver to retain any drippings of oil from the bearings of treadle bar.

“My invention consists in having the ends of the treadle bar V-shaped to fit in hole in

brace ‘C,’ also ♦ shaped to receive the

ends of the treadle bar.

“This V-shaped treadle bar in brace ‘C’ en¬ tirely prevents noise from the treadle, is self- adjusting, and does away with the necessity of cones and set screws now in use. This I claim as my invention. Fig. 1 represents platform ‘A’ and treadle bar, the ends of which are V-shaped and marked ‘B.’

“Fig. 2 represents the lower end of brace

‘C’ with hole shaped to receive the ends

of treadle bar ‘B.’ ‘D’ represents nut on end

of cross brace immediately below treadle bar.

“State of California, |

County of Tuolumne. |

“Herman Cramer, the above-named peti-

tioner, being duly *sworn, deposes and says that he verily believes himself to be the orig¬ inal and first inventor of the improvement in a noiseless self-adjusting treadle described in the foregoing specification, that he does not know and does not believe that the same was ever before known or used, and that he is a citizen of the United States.”

The application was referred to the exam¬ iner, who, on May 29, 1882, wrote to Cramer, in care of his attorneys, as follows:

“The application is not prepared in con¬ formity with the rules of the office. The specification is written on both sides of the pages, while the rules direct that it should be written on one side of each page only.

“No claim is appended to the specifica¬ tion. The oath is incomplete, as § 39 of the rules requires applicants to state under the oath if the invention has been patented to them, or with their knowledge and consent to others in any foreign country, and, if so, the number, date, and place of such patent or patents. Reference is made to the patent to G. W. Gregory, No. 25(5,563, April 18, 1882, which exhibits the alleged invention.”

On August 3, 1882, the following substi¬ tute specification, concluding with an oath similar to that appended to the prior speci¬ fication, was sent to the Patent Office:

“I, Herman Cramer, of the city of Sonora, in Tuolumne county, in the state of Califor¬ nia, have invented certain improvements in 438

a treadle and brace, to be used in sewing ma¬ chines or other machinery where a noiseless treadle may be required, of which the follow¬ ing is a specification:

“My invention consists in a combination of the usual platform marked ‘A,’ in Fig. 1 of diagram on treadle bar. The ends of said treadle bar marked ‘B’ are to bear against mufflers.

“The treadle-bar bearings are in and on brace ‘C.’ The treadle bar rests in socket in brace ‘C,’ which is immediately above a cross bar usually in machines to keep them from spreading apart.

*“The nut on end of cross bar is marked

‘D.’ Letter ;M/ immediately beneath cross bar, and treadle bar, is an oil receiver to re¬ tain any drippings of oil from the bearings of treadle bar.

“The treadle bar, mufflers, and brace ‘C’ are held between the right and left legs of the machine by means of a brace bar under¬ neath the treadle bar.

“This brace and socket or bearing in or on brace is in one piece.

“The treadle bar with mufflers on the ends, working or bearing in or on brace, entirely prevents noise from the treadle, is self-ad¬ justing, and does away with the necessity for cones and set screws now in use.

“Fig. 1 represents platform ‘A’ and treadle bar, the ends of which may be V- shaped, or any shape to suit, marked ‘B.’

“Fig. 2 represents the lower end of brace ‘C.’

“ ‘D’ represents nut on end of cross bar immediately below the treadle bar.

“What I claim is a combination of brace ‘C’ with socket or bearing in it or on it, to receive the treadle bar with the mufflers at the ends of treadle bar or in or on brace ‘C’ in connection with said brace ‘C,’ and the treadle bar in connection with brace ‘C,’ and mufflers to work in or on brace ‘C,’ sub¬ stantially as set forth.”

On August 14, 1882, the examiner wrote Cramer, in care of his attorneys, as follows:

“Applicant’s amended claims are met by the patent to J. E. Donovan, June 28, 1881,

No. 243,529, in view of which a patent is again refused.”

Following this rejection there was filed a revocation of the power of attorney which had been executed by Cramer in favor of the attorneys who had theretofore conducted the proceedings, and an appointment of other at¬ torneys for the further prosecution of the application. On October 17, 1882,, the sub¬ stituted attorneys sent to the Patent Office a new drawing and an amendment of the specification on file, which amendment con¬ sisted in canceling all the specification ex-

192 U. S.

Singer Mfg. Co. v. Cramer.

263-271

eept the *signature and substituting for the matter so stricken out the following:

“Be it known that I, Herman Cramer, of Sonora, in the county of Tuolumne and state of California, have invented a new and im¬ proved sewing-machine treadle; and I do hereby declare that the following is a full, clear, and exact description of the same, ref¬ erence being had to the accompanying draw¬ ing, forming part of this specification.

“My invention relates to improvements in the bearings of sewing-machine treadles, and it has for its object to provide means, first, to keep the treadle hearings rigidly in line and at a fixed distance apart to avoid fric¬ tion, and second, to make its movement in use noiseless. To this end my invention con¬ sists in the construction and combination of parts hereinafter fully described and claimed, reference being had to the accom¬ panying drawings in which —

“Fig. 1 is a perspective view of a portion of a sewing machine showing my invention.

“Fig. 2 is a transverse vertical section through one bearing of the treadle.

“A represents the treadle provided with the usual pitman connection by which to run the sewing-machine wheel. B represents the two trunnions cast as a portion of the treadle and extending from its sides into loopholes in the common cast-iron cross brace C. These trunnions are sharpened to an edge or corner along their lower sides, and the lower end of the loophole is hollowed to an angle more obtuse than the edge of the trunnion, to serve as a bearing for the same and permit the rocking motion common to treadles.

“C represents the usual cast-iron double brace connecting the two end legs diagonally in a plane generally vertical. The lower ends of this brace are secured directly to the web of the legs by bolts d, and for conven¬ ience and strength I make the two ends of the common cross bar D serve as these bolts. The upper ends of the brace are secured as usual, either to the web of the legs or to the table of the machine near the legs.

*“The treadle and its trunnion bearings are wholly independent of the cross bar D, except its service as stated, to hold the brace to the legs. The bearing holes in the brace are formed into long vertical loops to permit the entrance of the treadle.

“Pieces of leather F, or other soft ma¬ teria], cover the top and end of each trun¬ nion to serve as cushions to keep the same close in its bearing, to prevent the noise which would result were the trunnions per¬ mitted to bounce and thump endways, when the treadle is in motion. The leather F is fitted to the curve of the upper side of the 192 U. S.

trunnion, which is an arc of a cylinder, whose center of oscillation is the lower edge of the trunnion ; the same leather also inter¬ poses between the end of the trunnion and the adjacent iron, f is a block serving as a mere backer to which the cushion F is at¬ tached. This block conforms to the back and top side of the cushion and fills the loop¬ hole in the brace above the trunnion. It also has tangs or projections e, resting in suitable recesses in the brace C, which are held between the brace and the web of the leg E, by which means the block and cushion are held in place. Below the bearings of the trunnions B, I provide cups, M, attached to the ends of brace C, to catch the oil that usually drips from such bearings.

“By this construction my treadle bearings are rigidly fixed and in no way liable to get out of line or to require adjustment; the usual noise is prevented, and overflowing of oil is caught before it can do damage.

“I am aware that sewing-machine treadles have before been provided with V-sliapcd bearings, and I do not claim the same as my invention; but —

“What I claim and wish to secure by let¬ ters patent is —

“1. The vertical double brace joining the legs of the two ends of a sewing machine, provided with holes through its lower ex¬ tremities to serve as bearings, in combina¬ tion with a treadle provided with trunnions fitted to oscillate in said bearings, substan¬ tially as specified.

*“2. The sewing-machine legs E, the verti-

cal double brace C secured thereto and pro¬ vided with holes to serve as bearings for the treadle A, and the treadle provided with trunnions B to oscillate in said bearings, in combination with the cushion F and the block f, as and for the purpose specified.”

Accompanying the new specification was the following communication, signed by the attorney :

“A new oath is herewith filed. Gregory, referred to, pivots the grooved trunnions of his treadle upon knife edges secured within the upper loops of two collars, which are se¬ cured to the cross bar by means of set screws to keep them from turning. Dono¬ van pivots his treadle upon its trunnions having sharpened edges, in grooves in the cross bar, where it is held by collars pro¬ vided with flanges projecting over the trun¬ nions. Applicant pivots his treadle upon the sharpened edges of its trunnions in loop holes in the two ends of the brace which is bolted to the legs of the machine by the two ends of the cross bar. This service of the cross bar might be as well performed by two

439

271-274

Supreme Court of the United States.

Oct. Term

440 192 U. S.

Singer Mfg. Co. v. Cramer.

274

in the use by the Singer company of the Diehl device just referred to, Cramer brought this action at law against the Sing¬ er company on October 8, 1890, in the cir¬ cuit court of the United States for the northern district of California. By amend¬ ment of the declaration the recovery was limited to damages sustained by infringe¬ ments committed within the northern dis¬ trict of California. In the answer filed on behalf of the Singer company, — in addition to excepting to the jurisdiction of the court and pleading as res judicata a former judg¬ ment rendered in favor of the defendant in an action brought by Cramer against one Fry, an employee of the Singer company (08 Fed. 201 ) , — defenses were interposed of want of novelty and utility and lack of in¬ vention, and infringement was denied.

A trial was had which resulted (by direc¬ tion of the court, sustaining the plea of res judicata ) in a verdict and judgment for the defendant. This judgment was reversed by the circuit court of appeals for the ninth circuit. 35 C. C. A. 508, 93 Fed. 636. On a second trial a verdict was rendered for Cramer and judgment was entered thereon for the sum of $12,456. On appeal this judg¬ ment was affirmed by the circuit court of appeals for the ninth circuit. 48 C. C. A. 5SS, 109 Fed. 652. A writ of certiorari was thereafter allowed by this court.

Messrs. Charles C. Linthicum and Charles K. Oflield argued the cause and filed a brief for petitioner:

The construction of a patent is solely a matter of law for the court.

Hcald v. Rice, 104 U. S. 737, 26 L. ed.

In all cases where the claim is for an im¬ provement on a machine, it will be incum¬ bent upon the patentee to show the extent of his improvement, so that a person under¬ standing the subject may comprehend dis¬ tinctly in what it consists.

Evans v. Eaton, 3 Wheat. 454, 4 L. ed.

A failure on the part of the patentee in those prerequisites of the act which author¬ ize a patent is a bar to a recovery in an ac¬ tion for its infringement, and the validity of this defense does not depend on the in¬ vention of the inventor, but is a legal infei- ence upon his conduct.

Grant v. Raymond, 6 Pet. 248, 8 L. ed.

Where the ingredients are all old, the invention in such a case consists entiiely in the combination, and the requirement of the patent act that the invention shall be fully and exactiy described applies with as much force to such an invention as to any other 192 U. S.

class, because if not fulfilled all three of the great ends intended to be accomplished by that requirement would be defeated.

Gill v. Wells, 22 Wall. 25, 22 L. ed. 710.

A question of infringement is best deter¬ mined by the court by comparison.

Seymour v. Osborne, 11 Wall. 517, 20 L. ed. 33; McCormick v. Talcott, 20 How. 409, 15 L. ed. 932.

In patents for combination of mechanism, limitations and provisos imposed by the in¬ ventor — especially such as were introduced into an application after it had been persist¬ ently rejected — must be strictly construed against the inventor and in favor of the public, and looked upon as in the nature of disclaimers.

Sargent v. Hall Safe d Lock Co. 114 U. S. 86, 29 L. ed. 76, 5 Sup. Ct. Rep. 1021.

A comparison of the patent as granted, with the application, very conclusively es¬ tablishes the limits within which the pat¬ entee’s claims must be confined.

Sutter v. Robinson, 119 U. S. 540, 30 L. ed. 492, 7 Sup. Ct. Rep. 376.

The patentee, as to an improvement or patentable combination, before he can ex¬ pect to extend his patent or claim beyond substantially the form and statement of con¬ struction shown and described in his patent for such improvement or combination, must so indicate and express in his patent.

James v. Cambell, 104 U. S. 356, 26 L. ed. 786; Mahn v. Harwood, 112 U. S. 360, 28 L. ed. 667, 5 Sup. Ct. Rep. 174, 6 Sup. Ct. Rep. 451 ; Fay v. Cordesman, 109 U. S. 421, 27 L. ed. 984, 3 Sup. Ct. Rep. 236; Keystone Bridge Co. v. Phccnix Iron Co. 95 U. S. 274, 24 L. ed. 344; White v. Dunbar, 119 U. S. 51, 30 L. ed. 304, 7 Sup. Ct. Rep. 72 ; Burns v. Meyer, 100 U. S. 671, 25 L. ed. 738; McClain v. Ortmayer, 141 U. S. 424, 35 L. ed. 802, 12 Sup. Ct. Rep. 76; Lehigh Valley Ii. Co. v. Mellon, 104 U. S. 112, 26 L. ed. 639.

The construction given by this court in Snow v. Lake Shore d M. S. R. Co. 121 U. S. 629, 30 L. ed. 1008, 7 Sup. Ct. Rep. 1343, to a combination claim, in view of the state¬ ments in the specifications, is controlling in this case.

The conditions necessary to entitle a pat¬ entee to be called a pioneer, or his invention broad and basic, have been clearly defined by this court.

McCormick v. Talcott, 20 How. 405, 15 L. ed. 930; Chicago d A’. IF. R. Co. v. Sayles, 97 U. S. 554, 24 L. ed. 1053; Morley Sewing Mach. Go. v. Lancaster, 129 U. S. 273, 32 L. ed. 719, 9 Sup. Ct. Rep. 299; Miller v. Eagle Mfg. Co. 151 U. S. 207, 38 L. ed. 130, 14 Sup*. Ct. Rep. 310.

Under the construction for the Cramer

441

Oct. Thru,

Supreme Court of

patent, contended for by his counsel, such patent represents a mere aggregation, and not a patentable combination.

Wright v. Yuengling, 155 U. S. 47-53, 39 L. cd. 04 66, 15 Sup. Ct. Rep. 1.

The patent manufactured and justified un¬ der is prima facie evidence of the truth of the facts asserted in it, and prima facie evi¬ dence that the device manufactured under such patent is not an infringement of a pre¬ viously granted patent sued upon.

Corning v. Burden, 15 How. 252, 271, 14 L. ed. 683, 691; Boyd v. Janesville Hay Tool Co. 158 U. S. 260, 201, 39 L. ed. 973, 974, 15 Sup. Ct. Rep. 837 ; American Nicol- son Pavement Co. v. Elisabeth, 4 Fish. Pat. Cas. 189, Fed. Cas. No. 312; Robinson, Pat¬ ents, pp. 1016, 1041 ; Key v. Ney Mfg. Co. 16 C. C. A. 293, 37 U. S. App. 371, 09 Fed. 405, 408; Powell v. Leicester Mills Co. 103 Fed. 476, 487; Illinois Steel Co. v. Kilmer Mfg. Co. 70 Fed. 1012, 101 5 ; Ransomc v. Hyatt, 16 C. C. A. 185, 29 U. S. App. 715, 69 Fed. 148.

The burden of proof establishing infringe¬ ment is upon the plaintiff.

Agawam Woolen Co. v. Jordan, 7 Wall. 583, 19 L. ed. 177; Seymour v. Osborne, 11 Wall. 516, 20 L. ed. 33; Fuller v. Ycniscr, 94 U. S. 288, 24 L. ed. 103; Imhaeuser v. Buerk, 101 U. S. 647, 25 L. ed. 945.

The theory of the patentee and his opin¬ ion as to his invention are of no conse¬ quence upon the question of infringement.

Foss v. Herbert, 2 Fish. Pat. Cas. 31, Fed. Cas. No. 4,957.

The act of infringement is a tort or wrong, and the burden of proof is always upon the plaintiff, and is never shifted to establish such fact of infringement.

Seymour v. Osborne, 11 Wall. 516, 20 L. ed. 33; Fuller v. Yentzer, 94 U. S. 288, 24 L. ed. 103; Imhaeuser v. Buerk, 101 U. S. 647, 25 L. ed. 945; Agawam Woolen Co. v. Jordan, 7 Wall. 583, 19 L. ed. 177.

The inventor of the first improvement cannot invoke the doctrine of mechanical equivalence to suppress all other improve¬ ments which are not merely colorable inva¬ sions of the first.

McCormick v. Talcott, 20 How. 405, 15 L. ed. 931.

It is not the same combination if it sub¬ stantially differs from it in any of its parts.

Prouty v. Rugglcs, 16 Pet. 341, 10 L. ed.

W cstinyhouse v. Boydcn Power Brake Co. 170 U. S. 561, 42 L. ed. 1145, 18 Sup. Ct. Rep. 707, contains the most recent, clear, and conclusive statement and argument of this court upon the question of pioneer patents, and is peculiarly applicable to the facts in this case.

442

the United States.

Mr. John H. Miller argued the cause and filed a brief for respondent:

The petitioner in this proceeding must make out a very strong case before it can hope to persuade this court that the learned judge of the lower court should have peremptorily ordered the jury to find a verdict for the defendant, and thereby de¬ prive Cramer of his constitutional right to a trial by jury.

Coupe v. Royer, 155 U. S. 575, 39 L. ed. 267, 15 Sup. Ct. Rep. 199; Tucker v. Spalding, 13 Wall. 455, 20 L. ed. 516; Lis- chaff v. 'Wethcrcd, 9 Wall. 814, 19 L. ed. 830; Patton v. Texas iG P. R. Co. 179 U. S. 660,. 45 L. ed. 363, 21 Sup. Ct. Rep. 275.

If there was any evidence whatever on the question of infringement, there was no er¬ ror in submitting the matter to the jury.

Curtis, Patents, § 469; 3 Robinson, Pat¬ ents, ]). 378; Coupe v. Royer, 155 IT. S. 565, 579, 39 L. ed. 203, 268, 15 Sup. Ct. Rep. 199; Baltin v. Tuggert, 17 How. 84, 15 L. ed. 41 ; Bischoff v. Wethcrcd, 9 Wall. 812, 19 L. cd. 829; Hills v. Evans, 31 L. J. Ch. N. S. 463; Betts v. Mensics, 10 H. L. Cas. 117; Tucker v. Spalding, 13 Wall. 453, 20 L. ed. 515; Keyes v. Grant, 118 U. S. 25, 30 L. ed. 54, 6 Sup. Ct. Rep. 950; Royer v. Schultz Belting Co. 135 U. S. 319, 34 L. ed. 214, 10 Sup. Ct. Rep. 833; Mitchell v. Tilgh- man, 19 Wall. 4 IS, 22 L. ed. 144.

In making a motion to direct a verdict, the defendant necessarily concedes the truth of all the evidence adduced by tin? plaintiff.

Parks v. Ross, 11 How. 302, 13 L. ed. 730; Pawling v*. United States, 4 Crancli, 219, 2 L. ed. 601 (followed in Bank of United States v. Smith, 11 Wheat. 177, 6 L. ed. 445, and Merrick v. (Uddings, 115 U. S. 300, 29 L. ed. 403, 6 Sup. Ct. Rep. 65).

Where a motion is made to direct a ver¬ dict, the court should consider, not only all the facts which the evidence tends to estab¬ lish, but all such fair and reasonable infer¬ ences of fact as the jury might lawfully draw from the evidence.

New )ork Dry Goods Store v. Pabst Brew¬ ing Co. 50 C. C. A. 295, 112 Fed. 381.

A drawing alone and unaided cannot an¬ ticipate.

New Process Fermentation Co. v. Koch, 21 Fed. 580; Briton v. White Mfg. Co. 61 Fed. 95 ; Reeves v. Keystone Bridge Co. 5 Fish. Pat. Cas. 468, Fed. Cas. No. 11,660; Parsons v. Colgate, 21 Blatchf. 171, 15 Fed. 600 ; Robinson, Patents, § 325 ; Seymour v. Osborne, 11 Wall. 555, 20 L. ed. 42.

It is sufficient for a patentee to claim his invention in the specific forms shown by the drawings and specification, whether that invention be a broad or narrow one.

Winans v. Denmead, 15 How. 330, 14 L. ed. 717; Western Electric Co. v. La Rue,

192 U. S.

Singer Mfg. Co. v. Cramer.

275

139 U. S. 601, 606, 35 L. ed. 294, 296, 11 Sup. Ct. Rep. 670; Hoyt v. Horne, 145 U. S. 302, 309, 36 L. ed. 713, 716, 12 Sup. Ct. Rep. 922 ; Eddy v. Dennis, 95 U. S. 569, 24 L. ed. 365 : George Frost Co. v. Silvermann, 62 Fed. 465; Hoe v. Scott, 65 Fed. 609; Mc¬ Cormick Harvesting Mach. Co. v. C. Ault- man rf Co. 16 C. C. A. 259, 37 U. S. App. 299, 69 Fed. 394; Heap v. Greene, 34 C. C. A. 86, 63 U. S. App. 56, 91 Fed. 794; Nor¬ ton v. Jensen, 1 C. C. A. 452, 7 U. S. App. 103, 49 Fed. 866; Long v. Pope Mfg. Co. 21 C. C. A. 533, 33 U. S. App. 551, 75 Fed. 838; Independent Electric Co. v. Jeffrey Mfg. Co. 76 Fed. 991; Metallic Extraction Co. v. Broun, 43 C. C. A. 568, 104 Fed. 353; Reece Button-Hole Mach. Co. v. Globe But¬ ton-Hole Mach. Co. 10 C. C. A. 194, 21 U. S. App. 244, 61 Fed. 958; Devlin v. Paynter, 12 C. C. A. 188, 28 U. S. App. 115, 64 Fed. 398; Ives v. Hamilton, 92 U. S. 426, 23 L. ed. 494; Clough v. Gilbert & B. Mfg. Co. 106 U. S. 166, 27 L. ed. 134, 1 Sup. Ct. Rep. 188; Sessions v. Romadka, 145 U. S. 29, 36 L. ed. 609, 12 Sup. Ct. Rep. 799.

If the invention is a broad one, the court will give the claim a broad construction, notwithstanding the fact that the claim is framed in specific language; but if the in¬ vention is a narrow one, then the court will place upon the claim a narrow construction, and limit it to its exact language.

Deering v. Winona Harvester Works, 155 U. S. 286, 39 L. ed. 153, 15 Sup. Ct. Rep. 118; Westinghouse v. Boyden Power Brake Co. 170 U. S. 568, 42 L. ed. 1147, 18 Sup. Ct. Rep. 707 ; Murphy v. Eastham, 5 Fish. Pat. Cas. 306, Fed. Cas. No. 9,949; Metallic Extraction Co. v. Brouyn, 43 C. C. A. 568, 104 Fed. 346; McCormick Harvesting Mach. Co. v. C. Aultman & Co. 16 C. C. A. 259, 37 U. S. App. 299, 69 Fed. 371.

Patents for inventions are not to be treated as mere monopolies, and therefore odious in the eyes of the law, but are to re¬ ceive a liberal construction, and, under the fair application of the rule, TJt res magis valeat quam. pvreat, are, if practicable, to be so interpreted as not to destroy the right of the inventor.

Turrill v. Michigan S. & N. S. R. Co. 1 Wall. 510, 17 L. ed. 672.

A patent should be construed in a liberal spirit to sustain the just claims of the in¬ ventor, This principle is not to be carried so far as to exclude what it is, or to inter¬ polate anything which it does not contain. But liberality, rather than strictness, should prevail where the fate of a patent is in¬ volved, and the question to be decided is whether the inventor shall hold or lose the fruits of his genius and labors.

Providence Rubber Co. v. Goodyear, 9 Wall. 788, 19 L. ed. 566.

192 U. S.

A mere reversal of parts, or change of lo¬ cation of elements, without producing any new result, does not avoid infringement.

Union Paper Bag Mach. Co. v. Murphy, 97 U. S. 120, 24 L. ed. 935; Winans v. Den- mead, 15 How. 330, 14 L. ed. 717; Hoyt v. Horne, 145 U. S. 308, 36 L. ed. 715, 12 Sup. Ct. Rep. 922; Ives v. Hamilton, 92 U. S. 426, 23 L. ed. 494; Consolidated Safety- Valve Co. v. Crosby Steam Gauge Valve Co. 113 U. S. 158, 28 L. ed. 939, 5 Sup. Ct. Rep. 513; Devlin v. Paynter, 12 C. C. A. 188, 28 U. S. App. 115, 04 Fed. 398; J. Cleret So- cieie v. llehfuss, 75 Fed. 658; Harmon v. Struthers, 57 Fed. 638; McEvilla v. Hall d S. Lumber Co. 43 Fed. 139; Adams v. Jol¬ iet Mfg. Co. 3 llann. & A. 1, Fed. Cas. No. 56; llcece Button-Hole Mach. Co. v. Globe Button-Hole Mach. Co. 10 C. C. A. 194, 21 U. S. App. 244, 61 Fed. 958.

Where a patent calls for a structure con¬ sisting of two parts cast in one piece, in¬ fringement is not avoided by casting the two parts in separate pieces and subsequent¬ ly uniting them together to act in combina¬ tion.

Wheeler v. Clipper Mower <£ Reaper Co. 10 Blatchf. 193, 6 Fish. Pat. Cas. 1, Fed. Cas. No. 17,493; Strobridge v. Lindsay, 6 Fed. 510; Roots v. Hyndman, 6 Fish. Pat. Cas. 440, Fed. Cas. No. 12,040; Hyndman v. Roots, 97 U. S. 224, 24 L. ed. 975; Westing- house v. New York Air-Brake Co. 59 Fed. 581; Westinghouse Air-Brake Co. v. New York Air-Brake Co. 11 C. C. A. 528, 26 U. S. App. 248, 63 Fed. 962, 65 Fed. 99.

The substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself.

Union Paper-Bag Mach. Co. v. Murphy, 97 U. S. 120, 24 L. ed. 935.

Mr. Justice White, after making the foregoing statement, delivered the opinion of the court:

Sixty-eight exceptions were taken by the Singer company during the trial of the ac¬ tion in the circuit court, and were pressed upon the attention of the circuit court of appeals in sixty-nine assignments of error. These exceptions were all in effect relied upon in the argument at bar; but from the view we take of the case it is unnecessary to con¬ sider and decide any other assignment than that based upon the exception to the refusal of the court, at the close of all the evidence, to instruct a verdict for the defendant on the ground that “no infringement whatever had been shown.” As in each of the patents in question it is apparent from the face of the instrument that extrinsic evidence is not needed to explain terms of art therein, or to apply the descriptions to the subject-matter, and as we are able, from mere comparison, to

443

276-278

Oct. Term,

Supreme Court of the United States.

comprehend what are the inventions de¬ scribed in each patent, and, from such com¬ parison, to determine whether or not the Diehl device is an infringement upon that of Cramer, the question of infringement or no infringement is one of law, and susceptible cf determination on this writ of error. Hcald v. Rice, 104 U. S. 737, 26 L. ed. 910; Market Street Cable R. Co. v. Rowley, 155 U. S. 621, 625, 39 L. ed. 284, 287, 15 Sup. Ct. Rep. 224.

Whether error was committed in refusing to direct a verdict is, then, the question to be decided. The claims of the Cramer pat¬ ent are two in number, and read as fellows :

“1. The vertical double brace joining the legs of the two ends of a sewing machine, provided with holes through its lower ex¬ tremities to serve as bearings, in combina¬ tion with a treadle provided with trunnions fitted to oscillate in said bearings, substan¬ tially as specified.

*“2. The sewing-machine legs E, the verti¬

cal double brace C secured thereto and pro¬ vided with holes to serve as bearings for the treadle A, and the treadle provided with trunnions B to oscillate in said bearings, in combination with the cushion F and the block f, as and for the purpose specified.”

Infringement is charged only in respect to the first claim. In substance, the contention for Cramer is that the conception or idea of the practicability and desirability of utiliz¬ ing a vertical double brace as a support for a sewing-machine treadle was new with Cramer, and the combination devised by him produced such new and useful results, and exhibited such an exercise of the inventive faculty, as to cause the patent to be a pioneer, and, therefore, entitle the patentee to demand that the claim of the patent should be broadly and liberally construed. For the Singer company it is contended that the availability of use of a vertical cross brace as a support for a sewing-machine treadle was apparent to any person possess¬ ing ordinary mechanical skill, that the in¬ vention in question if patentable was in no just sense one of a primary nature, and that the combination described by Cramer is to be restricted narrowly to the mere details of the mechanism described as constituting the combination. We must first determine which of these contentions is correct.

Discussing the significance of the term “pioneer” as applied to a patented invention, this court, in Westinghouse v. Boyden Power Brake Co. 170 U. S. 537, 43 L. ed. 1136, 18 Sup. Ct. Rep. 707, said (p. 561, L. ed. p. 1145, Sup. Ct. Rep. p. 718) :

“To what liberality of construction these claims are entitled depends to a certain ex¬ tent upon the character of the invention, and whether it is what is termed in ordinary 444

parlance a ‘pioneer.’ This word, although used somewhat loosely, is commonly under¬ stood to denote a patent covering a function never before performed, a wholly novel de¬ vice, or one of such novelty and importance as to mark a distinct step in the progress of the art, as distinguished from a mere im¬ provement or perfection of what had gone before. Most conspicuous examples of such patents are: The one to Howe of the sewing machine; *to Morse of the electrical tele-(277] graph; and to Bell of the telephone. The record in this case would indicate that the same honorable appellation might be safely bestowed upon the original air brake of Westinghouse, and perhaps, also, upon his automatic brake. In view of the fact that the invention in this case was never put into successful operation, and was to a limited extent anticipated by the Boyden patent of 1883, it is, perhaps, an unwarrantable ex¬ tension of the term to speak of it as a ‘pioneer,’ although the principle involved subsequently and through improvements up¬ on this invention became one of great value to the public.”

To ascertain whether the patented inven¬ tion of Cramer is entitled to be embraced within the term “pioneer” as just defined, we will consider it in connection with the state of the art.

In the history of the art it is unquestioned that, long prior to the application by Cramer for the grant of the patent in ques¬ tion, devices similar to the vertical cross brace C and the lower cross bar or tie rod D, shown in the drawing of the Cramer pat¬ ent, were commonly employed in sewing ma¬ chines. This is conceded by Cramer in state¬ ments made in the progress of his applica¬ tion through the Patent Office. Thus, in the specification which forms a part of the pat¬ ent the vertical brace C is referred to (ital¬ ics not in original) as “the common cast- iron brace C,” and “the usual cast-iron double brace;” while in the first of the pro¬ posed specifications, as well as in that which was finally adopted, the lower bar or tie rod D is referred to (italics not in original) as “the common cross brace or cross bar.” And in both the first and second specifications the usual purpose subserved in sewing ma¬ chines by this cross bar was “to keep them (the machines) from spreading apart.” It is, of course, obvious that such was also the purpose of the employment of the vertical double or cross brace.

The vertical double cross brace C, as shown in the Cramer drawing, is a solid piece of casting. But it is also an undis¬ puted fact that, long prior to the alleged in¬ vention of Cramer, it was a well-known method of construction when revolving *or

oscillating shafts were to be placed in bear-

192 U. S.

Singeb Mfg. Co. v. Cramer.

278-280

ings or supports, to have both bearings or supports of such shafts attached to a solid metal casting. Instances of such practices, testified to by witnesses, may be referred to. One was a device to hold a saw mandrel or saw arbor, the former being cast in one piece for the purpose of connecting both journals of the arbor to keep it in absolute line. An¬ other device is the head stock of an or¬ dinary engine lathe or machine lathe, where, in order to have a proper working machine, it is absolutely necessary that the shaft bearings shall be in exact alignment with each other, and firmly in one place. Still another illustrative device employed for a great many years is embodied in a high¬ speed engine. So, also, in the sewing-ma¬ chine art, as evidenced by the Wilcox patent No. 106,242 of date August 9, 1870, to be hereafter noticed, the legs of sewing ma¬ chines had long before Cramer’s application been used as bearings for treadle bars, the bearings being cored out of the leg castings.

A vertical cross brace and a lower cross brace or tie rod being common adjuncts of sewing machines at the time of Cramer’s al¬ leged invention, and it being also customary to support the lower cross rod or brace in the web of the legs of sewing machines and to utilize the legs as bearings, and it being old in machinery to employ solid castings as bearings or supports for oscillating shafts where a fixed alignment was essential, we readily conclude that there was no merit in the mere conception or idea that a vertical double brace was capable of being advan¬ tageously utilized as bearings for sewing- machine treadles, and that the devising of means for so utilizing such a brace did not involve such an exercise of the inventive fac¬ ulty as entitled Cramer to assert in himself a right to claim a patent broadly for the use in combination of a vertical double brace and a sewing-machine treadle. In view of this, and of the fact that the principal ele¬ ments of the Cramer combination were old, we hold that the Cramer patent was not a pri¬ mary one, and that it is not, therefore, enti¬ tled to receive the broad construction which has been claimed for it. Let us, therefore, r 279] “examine the first claim of the patent in connection with the proceedings in the Pat¬ ent Office anterior to the allowance of the patent, in order to fix its precise import, as a preliminary to considering whether, as cor¬ rectly construed, it is infringed by the Sing¬ er appliance. The claim reads as follows :

“The vertical double brace joining the legs of the two ends of a sewing machine, pro¬ vided with holes through its lower extremi¬ ties to serve as bearings, in combination with a treadle provided with trunnions fitted 192 U. S.

to oscillate in said hearings, substantially as specified.”

In the first specification sent to the Pat¬ ent Office, the object sought to be attained is declared to be the elimination of the noise caused by the operation of a loose treadle, whether used in sewing machines or other machinery. The applicant evidently had in mind treadles which oscillated upon rigid bars and rested on cone bearings or analo¬ gous supports, attached to the rigid bars by set screws, — such bearings needing adjust¬ ment from time to time as the friction of the parts from the operation of the treadle caused wear and looseness of the parts. It was recited that the treadle bar and the platform on such bar (i. e., the foot rest) was to be cast as one piece. The invention was declared to consist “in having the ends of the treadle bar V-shaped to fit in hole in brace C, also heart shaped to receive the ends of the treadle bar.”

The application based upon this first spec¬ ification was rejected, as mentioned in the statement of facts, upon a reference to the patent to G. W. Gregory, No. 256,563, April 18, 1882, which the examiner stated exhib¬ ited “the alleged invention.” Gregory termed his invention “an improvement in treadle supports for sewing machines.” It is illus¬ trated in the following fac simile of one of the figures of the drawing of the patent :

*

The invention consisted in attaching to the lower cross bar or rod of a sewing ma¬ chine two devices styled collars, each collar having two circular openings, one above the other. The upper opening contained a V- shaped bearing. The cross bar was fitted into the lower opening. The treadle or foot rest was provided on each side with short projections termed ears, which fitted on the V-shaped bearings in the upper portion of each collar. The specification contained the following statement:

“I am aware that V-shaped or scale bear¬ ings are old in connection with the sewing- machine treadles,— as, for instance, a long rod to which the treadle is secured has been provided at its ends in the set frames of the machine stand with V-shaped bearings.”

445

280-283 Supreme Court of

At the close of the descriptive portion of the specification it was further stated :

"I am aware that sewing-machine treadles have had V-shaped bearings, as in United States patent Nos. 148,759 and 10G,242; but neither of said patents shows a bearing con¬ structed in accordance with my invention.”

No. 106,242 was a patent granted to C. H. Willcox on August 9, 1870. It covers the following device:

r281] *

The device shows the character of treadle support now employed in the Willcox & Gibbs sewing machine. The stand is devoid of a vertical cross brace, the legs of the ma¬ chine being braced near the bottom by the ordinary cross bar or tie rod. Just above this rod is exhibited the invention, being a “rocksliaft B, beveled at the ends, and pro¬ vided with V-shaped bearings 6, extending to the center of motion of the rocksliaft B, and supported in a V-shaped bearing seat a, in combination with a treadle movement.” Elsewhere in the specification the bearings or supports in legs of the machine to re¬ ceive the ends of the rocksliaft B are re¬ ferred to as “V-shaped bearings.” The state¬ ment is also made that “the bar is pre¬ vented from having any undue lateral move¬ ment by the washers upon the ends of the tie rod c, which holds the lower part of the frame together.” An alternate mode of con¬ struction of the bearings to support the rocksliaft was thus described (italics not in original) :

“The V-shaped seat of the bearings a may be formed of a separate piece of hard metal let into a groove in the frame, or otherwise applied to it, and the ends b may be formed

also of *a piece of hard metal, so that the wear of the parts in contact will be very 446

the United States. Oot. Term,

slight, and all rattling or loose jarring mo¬ tions entirely prevented.”

Although the first refusal to allow a pat¬ ent was made on May 29, 1882, it was not until August 3 following that the attorneys for Cramer transmitted an amended appli¬ cation to the Patent Office. In the substi¬ tuted specification the object to be attained is stated as in the previous specification.

An addition to the combination was made, however, in the use of what were styled “mufflers,” against which it was said the ends of the treadle bars were to bear. A patent was again refused, however, the ex¬ aminer noting that “applicant’s amended claims are met by the patent to J. E. Dono¬ van, June 28, 1881, No. 243,529.”

The drawing of the Donovan patent exhib¬ its a sewing-machine stand containing a ver¬ tical double brace. One form of treadle bar constituting a part of the invention was rep¬ resented as situated just below the vertical cross brace, and as having a rounded edge, supported in V-shaped bearings, in the legs or sides of the frame. A shoulder was indi¬ cated on each end of the bar, and a substi¬ tute device was also shown called a button fastener, which was to be attached from the outside of the frame to meet the end of the bar. It was said in the specification that the treadle bar might be made of cast iron and cast on and with the treadle. It was further stated (italics not in original) :

“The bearing supports are preferably made by coring out the frame in the manner shown in the drawings. It is obvious that other forms of supporting these bearings may be provided.”

Several modified forms of ordinary knife- edge bearings and inclined fastening and ad¬ justed devices were also shown. In such mod¬ ified forms the treadle was represented as designed to oscillate on a rigid bar, in ob¬ long grooves therein; lugs, having knife- edge bearings underneath, being cast on each side of the treadle. Adjustable col¬ lars were shown, fastened to the shaft or bar, with inclined lugs on the side of the col¬ lars, ''projecting laterally over and resting

against shoulders on the lugs upon each side of the treadle. The object of the inven¬ tion was declared to be (italics not in orig¬ inal) “to secure a more substantial table frame to the driving mechanism, and to pro¬ vide adequate means for the employment of V-shaped treadle bearings, so as to obviate the difficulty heretofore occasioned by lost motion, consisting in vertical ■ and endwise play of the treadle bar or shaft.” It was further observed by the applicant just pre¬ ceding his statement of claims as follows (italics not in original) :

“Frequent attempts have been made to use

192 U. S.

Singer Mfg. Co. v. Cramer.

283-285

knife-edge bearings for the treadle in sewing machines, but it has been found to be diffi¬ cult to prevent lateral lost motion and to ad¬ just the parts so as to compensate for their wear and to prevent rattling of the treadle, ichich has been a serious objection in their employment. My herein-described improve¬ ments have overcome all the serious objec¬ tions hitherto attending their use.”

Following the second rejection of his ap¬ plication, Cramer changed his attorneys as mentioned in the statement of facts. In the specification drafted by the new attorneys, and which became the basis of the allowed patent, the asserted invention was limited to its use in sewing machines, eliminating the statement of its adaptability “in other ma¬ chinery.” Concerning the “mufflers,” which in the previous specifications were simply referred to as bearing against the end of the treadle bars, or as being on the ends of such bars, the following statement was made (italics not in original) :

“Pieces of leather F, or other soft ma¬ terial, cover the top and end of each trun¬ nion to serve as cushions to keep the same close in its bearing, to prevent the noise which would result were the trunnions per¬ mitted to bounce, and thump endways, when the treadle is in motion. The leather F is fitted to the curve of the upper side of the trunnion, which is an arc of a cylinder whose center of oscillation is the lower edge of the trunnion; the same leather also inter¬ poses between the end of the trunnion and the adjacent iron, f is a block serving as a

mere backer to which *the cushion F is at¬ tached. This block conforms to the back and top side of the cushion and fills the loop¬ hole in the brace above the trunnion. It also has tangs or projections c, resting in suitable recesses in the brace C, which are held between the brace and the web of the leg F, by which means the block and cushion are held in place. Below the bearings of the trunnions B, I provide cups, M, attached to the ends of brace C, to catch the oil that usually drips from such bearings.”

It is not a strained deduction that the elaborate provision just referred to, respect¬ ing the mode of use of, and the purpose to be subserved by, the mufflers, was, in part at least, induced by the statement in the Will cox and Donovan patents above quoted, concerning the difficulties which existed in connection with the use of knife-edge or V- shaped bearings. Be this as it may, how¬ ever, we are of opinion that the Patent Of¬ fice, after twice refusing to allow the patent because of the prior patents referred to, was led to take favorable action, owing to the peculiar form of the described bearing, when situated in a vertical cross brace such as was shown in the drawing, with the de- 192 U. S.

scribed accessories, and that it was the pur¬ pose of the Patent Office to limit the patent to the particular device of treadle bar and bearing described and shown when employed in combination with a particular form of vertical cross brace. And this view is sup¬ ported by the claim in question. It con¬ tains words of limitation. It is recited therein that the combination is to be “sub¬ stantially as specified,” that is, as described in the specifications and shown in the draw¬ ings. Westinghouse v. Boyden Power Brake Co. 170 U. S. 537, 558, 43 L. ed. 1136, 1144,

18 Sup. Ct. Rep. 707. On referring to the specification we find it there expressly de¬ clared that the invention consisted “in the construction and combination of parts here¬ inafter fully described and claimed, refer¬ ence being had to the accompanying draw¬ ing.” Nowhere, either expressly or by rea¬ sonable inference, is it asserted that simply the best or a preferable construction of the whole or any part of the combination is what is described. On the contrary, start¬ ing with the well-known vertical cross brace,

.a *usual accessory to sewing machines, a spe-

cifie mode of construction of the treadle bar and of the bearings or supports in the verti¬ cal cross brace is set forth, and the specifica¬ tion is concluded with the following declara¬ tion (italics mine) :

“By this construction my treadle bearings are rigidly fixed and in no way liable to get out of line or to require adjustment; the usual noise is prevented, and overflowing of oil is caught before it can do damage.”

To prevent a broadening of the scope of the invention beyond its fair import, in the light of the circumstances surrounding the issuance of the patent, the words of limita¬ tion contained in the claim must be given due effect, and, giving them such effect, the statement in the first claim of the elements entering into the combination must be con¬ strued to refer to elements in combination having substantially the form and con¬ structed substantially as described in the specification and shown in the drawing.

Having determined the proper construc¬ tion of the claim of the Cramer patent, which is relied upon, it remains only to con¬ sider whether, as correctly construed, in¬ fringement resulted from the employment by the Singer company of the device covered by the Diehl patent. We find no difficulty in reaching a conclusion on this branch of the case. The treadle supports devised by Diehl, though they serve the same purpose as the device described and shown in the Cramer patent, are substantially different in con¬ struction. Irrespective of the question whether the treadle in the Diehl device is hung in the vertical cross brace proper, or iu an addition thereto properly to be re-

447

285-288 Supreme Court of

garded as the lower cross rod or cross tie of the machine, it is manifest that the bearing is essentially different in construction from that of Cramer, and is not adapted to re¬ ceive an oscillating bar; while the treadle is not supplied with long projections fitted to oscillate in the vertical cross bar on bearings therein, but is constructed to turn on point center screws which fit tightly in circular openings in projections from the vertical

cross bar. There is *no substantia] identity in the character of the two devices, unless, by substantial identity, is meant every com¬ bination which produces the same effect. The differences between the Diehl device and the Cramer construction are substantial, and not merely colorable.

The trial court should have granted the motion to direct a verdict for the defendant. In affirming the action of the trial court in overruling the motion, the Circuit Court of Appeals erred, and its judgment must, there¬ fore, be reversed. The judgment of the Cir¬ cuit Court is also reversed and the cause is remanded to that court with directions to grant a new trial, and for further proceed¬ ings not inconsistent with this opinion.

Reversed and remanded.

Mr. Justice McKenna took no part in the decision of this cause.