John M. Boyd filed a bill in the circuit court of the United States for the Western district of Wisconsin against the Janesville Hay-Tool Company and its officers, charging the defendants with infringement of letters patent granted the complainant, numbered as No. 300,687, and dated June 17, 1884, for an improvement in hay elevator and carrier.
The answer denied that complainant was the original and first inventor, and alleged anticipating patents, prior knowledge and use by others, and that defendants have made and sold hay carriers in accordance with patent No. 279,889, granted June 19, 1883, to F. B. Strickler.
There was a general replication; evidence was put in; on November 9, 1888, a decree was entered dismissing the bill of complaint (37 Fed. 887), and from this decree an appeal was taken to this court.
Curtis T. Benedict, for appellant.
C. K. Offield, for appellees.
Mr. Justice SHIRAS delivered the opinion of the court.
John M. Boyd, the appellant, filed his application on October 25, 1882, and, after several amendments, letters patent were granted him on June 17, 1884, and numbered as No. [158 U.S. 260, 261] 300,687. The specification discloses tht the invention has relation to improvement in hay elevators and carriers, and consists in the peculiar construction of the several parts, and in their combination and arrangement. There are 14 claims, of which 12 appear to be for combinations of parts, and 2 for specific devices which are claimed to be novel.
It clearly appears that Boyd was not a pioneer in this department of machinery. Many inventors had preceded him, and many patents had been issued for improvements in hay carriers in form and purpose similar to those described in Boyd's specification. We think the case is one where, in view of the state of the art, the patentee is only entitled, at the most, to the precise devices mentioned in the claims.
It is conceded that the defendants, before this suit was commenced, were manufacturing and selling hay carriers made under the Strickler patent, No. 279,889, dated June 19, 1883; and it is claimed on behalf of the appellant that, as the application for the Strickler patent was filed on May 15, 1883, several months after Boyd's application, that the Strickler patent furnishes no defense to the defendants if the machines made and sold by them infringed any of the Boyd claims.
Upon the assumption that, owing to the previous condition of the art, Boyd is to be restricted to the exact and specific devices claimed by him as novel, we do not deem it necessary to determine whether either Boyd or Strickler invented anything, because we think that the appellant has failed to show that the defendants have used the particular devices to which Boyd can be considered entitled. Our discussion, therefore, will be confined to the question of infringement.
As both applications were pending in the patent office at the same time, and as the respective letters were granted, it is obvious that it must have been the judgment of the officials that there was no occasion for an interference, and that there were features which distinguished one invention from the other. In American Nicholson Pavement Co. v. City of Elizabeth, 4 Fish. Pat. Cas. 189, Fed. Cas. No. 312, Mr. Justice Strong said: 'The grant of the letters patent was virtually a decision of the patent office that there is a substantial difference between the inventions. It raises [158 U.S. 260, 262] the presumption that, according to the claims of the later patentees, this invention is not an infringement of the earlier patent.' It would also seem to be evident that, as the purpose of the inventions was the same, and as the principal parts of the respective machines described were substantially similar, it was also the judgment of the office that the distinguishing features were to be found in some of the samller, and perhaps less important, devices described and claimed. Burns v. Meyer, 100 U.S. 671 .
We find it useful to adopt the following description of the Boyd invention, given in appellant's brief:
We learn from this description that what the counsel of the appellant regards as the special features of the Boyd invention are the stop, h, the catch, g, and their combination in the manner pointed out. And when we turn to the evidence of the appellant's expert, Cunningham, we find that in analyzing the Boyd machine he dwells chiefly on the functions [158 U.S. 260, 263] of the stop and of the catch, as constituting its meritorious features, and that the effect and purpose of his testimony, as likewise that of Boyd himself, are to show that there are a similar stop and catch in the defendants' carrier.
So, too, in the letters patent, we find Boyd's second claim set forth as follows:
When we examine the machine as made and sold by the defendants under the terms of the Strickler patent, we do not find these specific devices, or, rather, we do not find them in the shape and with the functions claimed by Boyd.
The comparison made by the defendants' expert, Powers, between the mechanism of the two inventions, in the particulars we are now considering, was as follows:
Doubtless, if the Boyd patent contained an invention entirely new, and first adapted to the end sought, such differences might be regarded as formal and evasive. But, coming as he did, in the train of the numerous inventors that had preceded him, whose inventions had been patented and put into practical use, we must conclude that Boyd, if entitled to anything, is only entitled to the precise devices described and claimed in his patent. Of course, it follows that if the defendants' specific devices are different from those of Boyd, no combination of such devices could be deemed an infringement of any combination claimed by Boyd.
These views of the case bring us to the conclusion reached by the court below, and its decree dismissing the bill is accordingly affirmed.
Mr. Justice GRAY did not hear the argument, and took no part in the decision of the case.