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Opinion of the Court
Dissenting Opinion

United States Supreme Court

56 U.S. 212

Brooks  v.  Fiske

Mr. Justice McLEAN.

I dissent from the opinion of the court. The defendants rest their defence on three grounds: 1. A want of novelty in Woodworth's invention.

2. That in the new patent of Woodworth, issued on the surrender of the old one, to correct the specifications, a new invention is claimed, not contained in the first patent.

3. That the defendant's machine is substantially different from the plaintiff's.

The Woodworth patent has been a subject of investigation frequently before the circuit courts of the United States, and of this court. And although the originality of the invention has been, I believe, uniformly sustained, still, the fact of novelty depends upon proof, and may be disputed by any one against whom suit is brought. The patent is prim a facie evidence of right in the patentee. A defence which denies the novelty of the invention, must be proved.

The original patent of Woodworth is dated the 27th of December, 1828. He describes his invention to be an 'improvement in the method of planing, tonguing, grooving, and cutting into mouldings, of either plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick, and cutting mouldings, or facing metallic, mineral, or other substances. He then describes the machinery by which this result is produced. And he says, in the conclusion, that he does not claim the invention of circular saws, or cutter wheels, knowing they have long been in use; but he claims as his invention, the improvement and application of cutter or planing wheels to planing boards, &c., as above stated, &c.

There is no claim, in his written specifications, for pressure rollers on both sides of the cutting cylinder, which confine the board to its place, and necessarily reduced it to an equal thickness; but in the drawings, these rollers appear at the proper places, and are so arranged as to reduce the board to a uniform thickness.

The written specifications, including the drawings, constitute a part of the patent, and must be construed as the claim of the plaintiff. In Ryan v. Goodwin, 3 Sumner, 514, it is said, if the court can perceive, on the whole instrument, the exact nature and extent of the claim made by the inventor, it is bound to adopt that interpretation, and to give it full effect. The same is held in Wyeth v. Stone, 1 Story, 270, 286; and in Ames v. Howard, 1 Sumner, 482, 485, it is said 'the drawings are to be taken in connection with the words, and if, by a comparison of the words and the drawings, the one would explain the other sufficiently to enable a skilful mechanic to perform the work, the specification is sufficient.' Bloxam v. Elsee, 1 Car. & Payne, 558, is to the same effect.

Formerly, patents were construed strictly as giving monoplies; but of late years, in England, inventions are treated differently, and a liberal view is taken in favor of the right. Blanchard v. Sprague, 3 Sumn. 535, 539. This has been the settled doctrine in this country, and it is founded upon the highest considerations of policy and justice. The opinion, delivered by my brother Curtis this morning, as the organ of the court, cites the authorities.

No patent, it is believed, which has ever been granted in this country, has been so much litigated as this one. This affords no unsatisfactory evidence of its value. Very shortly after Woodworth's machine was put in operation, a system of piracy was commenced, and, although twenty-five years have elapsed, numerous suits are still pending contesting the right. Mr. Justice Story was one of the first judges whose duties required him to scrutinize this patent in all its parts, and he sustained it in all. This was before the specifications were corrected. And this court also sustained it, in 7 How. 712, where it says, 'the specifications accompanying the application for a patent are sufficiently full to enable a mechanic with ordinary skill to build a machine.' And this is what the law requires.

In the corrected specifications the patentee says: 'Having thus fully described the parts and combinations of parts, and operation of the machine for planing, tonguing, and grooving boards or plank, and shown various modes in which the same may be constructed and made to operate, without changing the principle or mode of operation of the machine, what is claimed therein, as the invention of William Woodworth, deceased, is the employment of rotary planes, substantially as herein described, in combination with rollers or any analogous device, to prevent the boards from being drawn up by the planes, when cutting upwards, or from the planed to the unplaned surface, as described. And also the combination of the rotating planes with the cutter wheels, for tonguing and grooving, for the purposes of planing, tonguing, and grooving boards, &c., at one operation, as described.'

'And, finally, the combination of either the tonguing or grooving cutter wheel, for tonguing and grooving boards, &c., with the pressure rollers, as described; the effect of the pressure in these operations being such as to keep the boards, &c., steady, and prevent the cutters from drawing the boards towards the centre of the cutter wheels, whilst it is moved through by machinery,' &c.

L. Roguin, of France, in the years 1817 and 1818, invented a machine for planing, grooving wood, moulding, &c., it is alleged, substantially on the same principles as Woodworth's machine.

A considerable number of experts were examined, in the Circuit Court, on both sides, and their opinions, as usual in such cases, were directly in conflict. Such testimony, being written, cannot lead the court to a satisfactory result, by weighing the evidence, as might be done by a jury, where the witnesses are examined in open court. There seems to be no other mode of arriving at a correct conclusion, than to read what the experts have said, and make up an opinion on the specifications of the patents, and on an examination of the models.

The French machine was improved in 1818. The patentee says: 'The parent idea of the first machine could not vary. This parent idea consisted in subjecting the wood to the action of a tool of a particular shape, and to impart to this tool a rotary movement; but the choice remained, either of making the tool stationary, and causing the wood to advance under it with a slow and progressive motion-one rotary, the other progressive. The first was adopted in the construction of the machine described in support of the petition for letters-patent; the second has been adopted in the construction of the improved machine.'

After describing the structure of the cylinder, he says: 'It is borne by a cast-iron carriage, and to the back part of this carriage is attached an iron axletree, bearing two brass pinions, which gear into a rack, and tend to regulate the movement of the carriage. The bench moves itself vertically by means of screws which support it, and tend to raise it or lower it, according to the thickness of the wood to be worked.' 'Four small, graduated plates of metal, placed in the interior angles of the superstructure, act as a regulator to fix this bench in a perfectly horizontal position.' 'Two iron squares abut the bench at both ends.' 'Experience,' he says, 'has taught that the weight of the bench was not sufficient, singly, to prevent the vibration imparted to it by the machine when in operation, and there resulted from this vibration waves on the surface of the planed board.' This was obviated by the weight of the carriage. 'The carriage is of cast iron, and weighs about two hundred and forty-one pounds. It is necessary that the carriage should be of sufficient weight, so as not to be raised by the strain of the tool.'

'The back part of the bench carries a claw, against which the wood is rested and stopped like a carpenter's bench. At the other extremity, the wood is stopped by movable dogs, which pass under a bar through which passes pressure screws.' And he further says: 'We have seen, in the description of the first machine, that the mece called guide (because it serves effectually to guide the wood under the tool for grooving and moulding) was fixed on the superstructure of the bench. In the new machine, this piece is borne by the carriage.'

From this description it appears, that the planing cylinder is carried by an iron frame, and passes over the surface of the board, which is fastened on a bed by a claw at one end, and at the other by movable dogs.' This bench, on which the board is placed, is movable vertically, so as to be adjusted by screws to the thickness of the wood to be worked.

The wood is fastened on this adjustable bed, and the iron frame which carries the cutting cylinder is of sufficient weight to keep the cutters on the board, but this machinery cannot reduce the plank to the same thickness. When the bench rises or falls, the whole surface of the plank rises and falls, and the cutting knives cannot so operate by pressure on so long a surface as to reduce the inequalities of the board. But this can be done by pressure rollers, as in Woodworth's machine, on each side of the cutting cylinder-one adjustable, so as to admit the unplaned plank; the other fixed, so as to admit the passage of the plank, when reduced to the required thickness. The French machine may present a smooth surface, but the inequalities of the board will not be removed. They will remain in the same proportion as before the planing operation.

It is argued, that the piece or bar which, in the first machine, was fastened to the bench, and which, in the improved one, was annexed to the carriage, operated as a pressure roller. If this were admitted, it would not remove the difficulty, as one pressure roller or bar could answer no valuable purpose. There must be two rollers, one adjustable, as above stated, or two fixed rollers, or bar and an adjustable bed, to reduce the plank to an equal thickness. But if L. Roguin be permitted himself to describe the function of this bar, it is, 'to guide the wood under the tool for grooving, tonguing, and moulding.' Shall the language of the inventor be misapplied, and this bar be appropriated to a use which it would seem be never thought of, to render invalid Woodworth's patent?

Several of the witnesses on both sides gave their testimony from the description of L. Roguin's patent, published in a book called 'Brevets d'Inventions;' but, as that book was not published until after Woodworth's invention, its description is evidence only so far as it agrees with the specification attached to the patent of L. Roguin. And it does appear, from the original specifications, filed by him, a certified copy of which has been recently procured by M. Perpigna, that there are some material variances. We must therefore look to the authentic paper and drawings, as certified, for evidence in regard to the machine.

The organization of this machine does not seem to be on the same principle as Woodworth's, and the result is different.

The other French machine, alleged to be similar to that of Woodworth's, is De Manneville's. This machine was patented in France in 1825 and described in the printed work called 'Brevets d'Inventions.' The patent embraced two machines, having for (their) object the grooving, planing, and reducing to a uniform thickness, wood intended for inlaid work; as well as all sorts of boards, whatsoever may be their dimensions. The inventor calls them a groover and planer.

The description of this machine by the inventor is confused, and scarcely intelligible. One of the defendants' witnesses describes it as having two planes, one of which is called rough, the other smooth, both of which are kept down to the face of the board by a tool-bearer, and are moved backward and forward by a crank motion. The rough plane is movable to and from the board, by being held to it by a spring; the smooth plane, or finisher, is immovable, principally, from the board, except to separate the shavings from it. The position of the board is edgewise, resting on the horizontal rollers-friction rollers; and it is carried through by a pair of fluted cylinders or rollers, vertical, and parallel to each other; which rollers press upon each side of the board, one of which, the back one, is made to slide in its boxes, held up by a spring, and thus made to yield to the inequalities of the thickness of the board. Another pair of rollers, holding the same vertical position, called discharging cylinders, neither of which is yielding, nor are they fluted; and to adjust the different thicknesses, the inventor suggests rollers of different diameters, and on an adjustable bed.

Any one can at once see that this is not an organization of machinery similar to Woodworth's machine. It is not the same principle, nor is it in substance like it. This remark is made in regard to the combination claimed by Woodworth, and not to all the elements of which that combination is formed. In the Manneville machine there is no combination of pressure rollers with rotary cutters, as in Woodworth's; the cutters have a reciprocating motion instead of a rotary one. Several of the elements in both machines are the same, but they are not so arranged as to act in the same manner or on the same principle.

Some of the witnesses for the defendants think, that from the two French patents, the Woodworth machine might be constructed without invention; but these machines must be considered singly, and not together. In the defence it is alleged, in reference to Woodworth's machine, that 'the same thing substantially was patented in France, in 1817 and 1818, by L. Roguin, and in 1825, by Manneville. The defence, in this respect, is not sustained, as neither of the patents are substantially the same as Woodworth's.

The next point for consideration is, whether, in the amended specifications of Woodworth's patent, in 1845, a new invention was claimed, not embraced in the original patent.

It must be admitted, that the subject-matter of the new patent is the same. The patent was surrendered, to correct defective specifications, which did not result from any fraudulent intent. This right was secured to the patentee by the thirteenth section of the patent act of 1836; and, on an application to the commissioner of patents, he, finding there had been no fraud, a new patent was issued for the same invention, more accurately described, as the law authorized.

In the case of Woodworth v. Stone 3 Story's Rep. 749, and Allen v. Blunt, Ib. 742, it was held, that the action of the commissioner, in accepting a surrender of a patent and issuing a new one, concluded the parties, unless fraud be shown. And in Stimpson v. West Chester Railroad, 4 Howard, 380, this court say, 'In whatever manner the mistake or inadvertence may have occurred is immaterial. The action of the government in renewing the patent, must be considered as closing this point, and as leaving open for inquiry, before the court and jury, the question of fraud only.'

The corrected specifications of the new patent, on a surrender, would necessarily be different from those that were defective. And it is the duty of the commissioner not to permit a new invention to be claimed under the pretence of correcting defective specifications.

Some things are omitted in the new patent which were claimed in the old one. But the principal objection on this ground seems to be, that pressure rollers were claimed in the new patent, and were not claimed in the old one. This is a mistake, as has already been shown. These rollers were represented in the drawings, and in that way were more accurately described than they could have been by a written specification. These drawings are a part of the patent. It does not appear that the corrected specifications embrace a new invention, not included in the original patent.

The third and last point is, whether the defendants' machine is an infringement of the plaintiffs'.

In the opinion of the Circuit Court in this case, it is said, 'The defect in the Hill machine was, that it did not reduce the board to a uniform thickness. This desideratum the plaintiff has obtained by an improvement, for which he was entitled to a patent. The defendant has accomplished the same purpose without using the improvement of the plaintiff, but merely by a new invention of his own, and therefore does not infringe.'

From these remarks it would seem, that the Circuit Court considered Woodworth as entitled to a patent, 'for reducing boards to a uniform thickness,' but that his patent does not cover it. In this the Circuit Court was mistaken, as I shall endeavor to show, in fact and in law.

It is not controverted, that Woodworth's combination of machinery does reduce boards to an equal thickness. He did not and could not claim a patent for reducing a board to a uniform thickness; for an exclusive right could not be given for such a result. For centuries, boards have been reduced to a uniform thickness by hand planes, and, perhaps, by other means. What, under the patent law, could Woodworth claim? He had a right to claim, as he did claim, a combination of machinery which would produce such a result. Was it necessary, in the summing up of his claim, which is done to distinguish what he has invented from parts of his machine which he has not invented, that he should claim the combination of his machine for the purpose of reducing boards to a uniform thickness? This would have limited his invention to that purpose, when it was applicable, and was intended to be applied, to that and many other purposes.

By the sixth section of the patent law of 1836, an inventor is required to describe his invention in every important particular, in his application for a patent, so as to enable those skilled in the art or science to which it appertains, to make, construct, compound, and use the same; and if the invention be a machine, he is required to state 'the several modes in which he has contemplated the application of the principle or character by which it may be distinguished from other inventions; and 'shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention and discovery.' He is required to accompany the whole with a drawing, and, if a machine, a model, &c.

Is it not clear that Woodworth has explained the principle, and the several modes in which he has contemplated the application of the principle or character of his machine, by which, in the language of the act, it may be distinguished from other inventions? The plank is planed, tongued, and grooyed, by an organization of machinery unknown before. This is all, in the summing up, which the act requires.

It is objected that Woodworth does not include, in his claim, that of reducing a plank to a uniform thickness. The invention consists in the means through which this is done. A result, or an effect, is not the invention. This appears to have been the turning point in the opinion of the Circuit Court.

But Woodworth has, in the specifications of his machinery stated that the board is necessarily reduced to a uniform thickness. He says 'The edges of the plank, as its planed part passes the planing cylinder, are brought into contract with the above-described tonguing and grooving wheels, which are so placed upon their shafts, as that the tongue and groove shall be left at the proper distance from the face of the plank, the latter being sustained against the planing cylinder by means of the carriage, or bed plate, or otherwise, so that it cannot deviate, but must be reduced to a proper thickness, and correctly tongued and grooved.' Here Woodworth describes the combined operation of planing, tonguing, and grooving; and by which the plank is reduced to a proper thickness, that is, the required thickness; and correctly tongued and grooved,' &c. This is the effect of his machine in planing boards clearly, described.

He says, the board is kept against the planing cutters by means of the carriage, or bed plate, or otherwise. The pressure rollers are claimed in his specification written, and also in his drawings, which show how they are to be applied. He also says, 'Fig. 7 represents the same machine with the axes of the planing cylinder placed horizontally, and intended to operate on one plank only at the same time. A A is the frame; B B the heads of the planing cylinder; C C the knives or cutters attached to said heads, to meet the different thicknesses of the plank; the bearings of the shaft of the cylinder may be made movable by screws or other means, to adjust it to the work, or the carriage of the bed plate may be made so as to raise the plank up to the planing cylinder.'

The patent of the defendants was issued February 12th, 1850. It is alleged to be an improvement upon Hill's machine. That machine, from the description, consisted of a planing cylinder, a platform bench, with an aperture in it, through which the planing cutters operated, so as to cut away any required thickness from the surface of the plank subjected to its action; the relation of the cylinder to the bench was permanent; a spring plate bore upon the plank nearly opposite to the cylinder, and forced it towards the cylinder and bench; feeding rollers carried the plank forward, the same as in Woodworth's machine.

By this operation a stratum of equal thickness was cut from the plank, leaving a smooth surface, but not removing the inequalities of the board. The combination of machinery was different in principle from Woodworth's, and, consequently, the result was different.

Norcross says, his invention is an improvement of Hill's machine, and 'renders it capable of reducing or planing a board to an equal thickness throughout its length.' He says, 'Hill's machine was capable of planing or reducing a board on one side, or removing from such side a stratum or layer of wood of an equal thickness,' but this did not make the board of uniform thickness.

The amended machine contains rotatory planes which cut, from the planed to the unplaned surface of the plank; an adjustable bar and rest, is at a fixed distance from the cutting action of the planes; the rotating planes and this rest bar were so connected together in a separate frame as to move vertically with the frame, and is borne downwards by their weight; two bars, one before and the other behind the rotating planes, and on the face of the plank cut by them, to cause its opposite face, in its progress through the machine, of whatever thickness and however warped, to pass in contact with the rest bar F. One of the said bars is termed a platform B, and the distance between this and the rest bar F, is variable and self-adjusting to the varying thickness of the plank before it is planed, and the other, called a horizontal bar or throat-piece G, placed at the same distance from the rest bar F, as the line of the cutting action of the rotating planes, to act on the face of the plank which has been planed, and ensure the contact of the opposite and unplaned face with the rest bar F.

Norcross says, what I claim as my invention is, the combination of the rotatory planing cylinder E, and the rest F, with mechanism, by which the two can be freely moved up or down, simultaneously and independently of the bed, or platform B B, or any analogous device, substantially in the manner and for the purpose of reducing a board to an equal thickness throughout its length, all as hereinbefore specified.'

'I also claim the above-described improvement of making the underside of the rest concave, in combination with so extending the part B, under the rest F, and applying it to the concave part thereof, as to cause the board, as it passes across the rest, to be bent, and presented with a concave surface to the operation of the rotatory cutter planing cylinder, substantially as specified.'

This organization of machinery seems to be the same in principle as that of Woodworth's, and produces the same result. If the concave surface of the board, on which the cutters operate, be an improvement, or any other slight change has been made, which may be an improvement on Woodworth's machine, that would give the defendants no right to use it without a license.

The difference between the machines appears to be this. The rotating planes and the plate or bed of Woodworth's are stationary in the main frame, and the roller or analogous device on that face of the plank to be planed, is movable toward and from the plate or bed to suit the varying thickness of the plank. While in the Norcross machine, two bars are substituted for the pressure rollers; and instead of making the one which acts on the plank before it is planed, movable, to suit the varying thickness of the plank, it is fixed permanently in the main frame; and the rotating planes and the plate or bed, termed by him the rest bar, F, are connected together in a separate frame, and together move up and down, to adapt themselves to the inequalities in the thickness of the plank.

Norcross has made that part of his machinery movable, which in the Woodworth machine is fixed; and that which is movable in the Woodworth machine, he has made permanent. These changes, and the reversal of Woodworth's machine, is the difference in their structure. A cast of the eye on the models, will satisfy a machinist of the truth of this representation.

Whether the cutting cylinder operates above or below the bench on which the plank is laid, can be of no importance; nor is the difference material whether a pressure roller varies to suit the variable thickness of the plank, or the planing cylinder, connected permanently with the bench, shall be elevated or depressed to accomplish the same object. These devices, though different in form, are the same in principle, and produce the same effect.

I think there is an infringement, and that the decree of the Circuit Court should be reversed.

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).