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A, and the other [end of which] rests upon the cam, P, of the cam-shaft, Q, so that by means of said cam-shaft the bridge-tree, O, may be raised or lowered to bring the friction-pulley, L, into or remove it from contact with the friction-pulley, K. R is a brake-bar which may be made of wood or other suitable material. One end of this [the] brake-bar [R] is pivoted to the frame, A, or [to] some other suitable support, and its other end is connected with one [the] end of the bridge-tree, O, by the bar, S, so that as the friction-pulley, L, is moved away from the [friction] pulley, K, the brake may be applied to the friction-pulley, K, either to hold the bar, C, stationary, or to allow it to descend with any desired rapidity. To one end of the cam-shaft, Q, is attached a lever or arm, T, having a weight, U, suspended from its end, which may be regulated so as to hold the friction-pulley, L, against the [friction] pulley, K, with any desired force. The lever or arm, T, may be operated to throw the friction-pulley, L, into or out of gear with the friction-pulley, K, by means of levers or cords, as may be desired or found most convenient. "Having thus described my invention, [what] I claim as new and desire to secure by letters patent [is]

"1. The toothed-bar herein described, operating substantially in the manner and for the purpose specified.

"[1] 2. The toothed-bar, C, pivoted at its lower end between the blocks, E, which are adapted to slide in vertical grooves formed in the posts, D, whereby the said bar, C, is rendered vertically movable and capable of adjustment to suit logs of different sizes, substantially as herein set forth [and shown.]

"3. The combination [arrangement] of the pivoted brake, R, connection, S, and pivoted bridge-tree, O, [in which is formed the outer bearing for shaft, m,] substantially as herein shown and described, [whereby pulley, L, is removed from contact with pulley, K, and the brake brought into contact with the latter and vice versa simultaneously, as herein set forth.]

"[2] 4. The combination with [and arrangement with relation to] the bar, C, of the cord or chain, F, pulley, G, shaft, J, drum, I, friction-pulleys, K, L, and adjustable shaft, M, [all] substantially as set forth [and shown.]

"[4] 5. The combination [arrangement] of the cam, P, and shaft, [P,] Q, and weighted arm, T, with [relation to] the connected brake and bridge-tree, to operate as and for the purpose described."

It appeared by the bill of exceptions that the only claim of the reissued patent upon which the plaintiff relied, or which was considered under the instructions of the court to the jury, was the first claim. The plaintiff relied simply upon the infringement of the toothed-bar and its mode of operation. He did not allege infringement of any combination claim, or of the device, or any of its parts, by which the movement of the toothed-bar was produced. The plaintiff also introduced evidence tending to show, as he claimed, infringement by the defendant of the first claim of the reissued patent, and evidence tending to show the damages sustained by him by reason of such infringement. The defendant, to sustain his defenses, introduced in evidence letters patent "for certain improvements in log-turners" issued to John Torrent, dated August 12, 1873, upon his application therefor filed January 29, 1873. In this patent a wedge-shaped tooth-bar is shown hinged at its lower end to an upright shaft, in order that it might adjust itself in proper position to take hold of a log and roll it to and on the carriage of a saw-mill. The apparatus was shown in combination with inclined ways upon the log-deck, provided with a stop to hold back the logs which lay side by side in a series on the log-deck, and it was intended that the log-turning device should separate the last log in the series from the others, and roll it over from the deck upon the carriage. The first claim of the patent was "the toothed-bar, the bottom of which is pivoted to an upright reciprocating shaft, as described." The specification of the patent was illustrated by the annexed drawing:

The defendant then introduced evidence tending to show that the machine the use of which by him was charged by the plaintiff to be an infringement on his reissued letters patent, was constructed according to the patent of John Torrent, just described. The evidence having been closed, the defendant asked the court to charge the jury "that in view of the pleadings and proof, and the claims and disclaimers of the plaintiff regarding the portion of his patent claimed to be infringed, the jury are instructed to render a verdict for the defendant." The court refused to give this charge. After receiving the charge of the court upon the case, as presented by the pleadings and evidence, the jury returned a verdict for the plaintiff for $960, on which the court rendered judgment. The writ of error in this case brings up that judgment for review. The refusal of the court to direct the jury to return a verdict for the defendant is, among other things, assigned for error. We think the charge requested should have been given, because, in our opinion, the first claim of the reissued patent, which is the only one that the plaintiff insisted had been infringed, is void.

The testimony showed that it was the practice in saw-mills to "slab" the logs after they were placed on the carriage; that is, to saw off slabs on two or four sides of the log. To accomplish this it was necessary that the log should be turned on the carriage. An inspection of the drawings and speci-' fication of Esau Torrent's original patent shows that his device was for the turning of logs upon their axes when placed upon the carriage of a saw-mill, so that the opposite parts of the log might be successively presented to the saw, and slabs cut therefrom. It was no part of the purpose of the contrivance to roll the log from one place to another, as from one part of the logdeck to another, or from the log-deck to the carriage. On the contrary, the drawing shows that the device was so made as to prevent the rolling of the log from one place to another. This was accomplished by knees considerably higher than the diameter of the log, against which the log was pressed, and which held it in position and formed part of the means by which the log was made to revolve on its axis. When placed in contact with the knees, the log was in the right position to be subjected to the action of the saw. It is not possible with this device to roll the log from one place to another except by raising it, if that could be done, to the top of the knees and tumbling it

*668

over them to the other side; and if this were done, it would defeat the object of the invention by moving the log off the carriage and away from the saw. In the reissue the specification is modified so as to make a radical change, not only in the purpose, but in the mechanism of the invention. In the original patent the invention was declared to be an improved device for turning or rolling logs upon the carriage of a saw-mill. In the reissue the invention was declared to be a device for turning or rolling logs to or upon the carriage. The device, as described in the reissued patent, is adapted, not only to turn logs on their axes, but to roll them from one place to another, as from one part of the log-deck to another, or from the log-deck to and upon the carriage. This requires a change of mechanism. To turn a log when on the carriage without change of its location requires that the toothed-bar should be placed as closely as possible to the side, or within the side of the carriage, and there must be knees to prevent a change in the location of the log. To roll a log to the carriage, or to roll a log from the log-deck upon the carriage, the toothed-bar must be at a distance from the carriage at least as great as the diameter of the log, and the slot in which it works must be extended accordingly, and the knees are not only unnecessary, but would be an obstruction to the operation of the device. The movement of a toothed-bar in turning a log on a carriage against the resistance of the knees is necessarily in the same plane, while the movement of a toothed-bar in rolling a log towards, or upon a carriage is necessarily in constantly changing planes, as the bar follows the changing position of the log. The change of the specification, therefore, includes an omission of the knees, a change in the location of the toothed-bar, a change in its movements, and a change in the effect produced by its movements. The reissue, consequently, covers a different invention from that described in the original patent. It embraces a different machine, intended for different purposes and performing different functions, from that described in the original patent.

When we turn to the claims of the reissued patent we find a corresponding enlargement of the scope of the patent. The claims of the original patent are substantially reproduced in the reissued patent, except that a combination instead of an arrangement of the different parts was claimed. But a new claim is added, namely, the first, which is as follows: "The toothed-bar herein described operating substantially in the manner and for the purpose described." Each of the claims of the original patent was for a combination. But the first claim of the reissue covers the toothed-bar operating substantially in the manner described, without reference to the mechanism by which it was moved, segregated from the combination and claimed as a distinct invention of the patentee. The operation of the toothed-bar is enlarged in the first claim of the reissue. In the original patent it was used in connection with the knees set upon the log carriage to prevent the log changing its place, and to aid in giving the log a rotary motion on its axis. In the first claim of the reissue, construed in connection with the changed specification, the toothed-bar may be used with or without the knees. The knees are used when the toothed-bar is employed for revolving the log on its axis, and they are omitted when the toothed-bar is used for rolling the log over and moving it from one place to another. Both the specification and claims of the reissue are enlarged to include an invention not described or included in the original patent.

The application of John Torrent for his patent, dated August 12, 1873, was filed January 29, 1873. The invention covered by his patent was the alleged infringing machine used by the defendant. After the patent of John Torrent had been applied for, and his invention fully described in his application, and nearly five years after the grant of the original letters patent to Esau Torrent, the latter applied for the reissue with its expanded specification and claims. The reissue was clearly intended to forestall John Torrent's

invention and include it in the claims of the reissued patent of Esau Torrent. We find, therefore, that the specification and first claim of the reissue was an enlargement of the claims of the original patent, and covered an invention not covered or described therein; that the reissue was not applied for until nearly five years after the date of the original patent, and not until another inventor had made a substantial advance in the art to which the original patent belonged, which the assignee of the original invention, it may be fairly inferred, desired to include in the monopoly of his patent, and that he sought to accomplish this by its reissue. The first claim of the reissued patent was therefore void. This conclusion is sustained by many decisions of this court, some of which may be found in the following cases: Gill v. Wells, 22 Wall. 1; The Wood Paper Patent, 23 Wall. 568; Powder Co. v. Powder Works, 98 U. S. 126; Ball v. Langles, 102 U. S. 128; James v. Campbell, 104 U. S. 356; Heald v. Rice, Id. 737; Miller v. Brass Co. Id. 350; Johnson v. Railroad Co. 105 U. S. 544; Bantz v. Frantz, Id. 160; Wing v. Anthony, 106 U. S. 142; S. C. 1 SUP. CT. REP. 93. Especial attention is called to three decisions of this court which are peculiarly apposite: Clements v. Odorless Excavating Co. 109 U. S. 641; S. C. 3 SUP. CT. REP. 525; McMurray v. Mallory, 111 U. S. 97; S. C. 4 SUP. CT. REP. 375; and Mahn v. Harwood, ante, 174, decided at the present term.

It follows, from the views we have expressed, that the plaintiff below failed to show any cause of action against the defendant. The court should, therefore, have charged the jury, as requested, to return a verdict for the defendant. Its refusal to do so was error, for which the judgment must be reversed, which is accordingly done, and the cause is remanded to the circuit court, with instructions to grant a new trial.

(113 U. S. 97)

ROWELL and another v. LINDSAY and another.

(January 5, 1885.)

1. PATENT LAW-INFRINGEMENT, ETC.-REISSUED LETTERS PATENT No. 2,909, March 31, 1868, FOR "NEW AND IMPROVED CULTIVATOR."

2. SAME-PATENT OF A COMBINATION-ELEMENTS.

When a patent is for a combination only, and none of the separate elements of which it is composed is claimed as the invention of the patent, none of the elements is included in the monopoly of the patent.

3. SAME-COMBINATION-ONE VARYING ELEMENT-NO INFRINGEMENT.

When there is one element of the plaintiffs' patented combination which the defendant does not use, and for which no equivalent is employed, there is no infringement.

Appeal from the Circuit Court of the United States for the Eastern District of Wisconsin.

James J. Dick, for appellants. E. E. Wood and E. Boyd, for appellees. WOODS, J. The appellants, John S. Rowell and Ira Rowell, were the plaintiffs in the circuit court. They brought their bill in equity against Edmund J. Lindsay and William Lindsay, the appellees, to restrain the infringement of reissued letters patent No. 2,909, dated March 31, 1868, granted to the plaintiffs for*"a new and improved cultivator." The invention was illus-* trated by the annexed drawings, and was described in the specification as follows:

"Fig. 1 is a side elevation of the tooth, in a beam shown in longitudinal section. Fig. 2 is a top view of the beam, with the tooth in position. This invention consists in applying to the shank of the tooth a curved brace-bar, the upper end of which passes through a slot or mortise in the beam, and is

18. C. 6 Fed. Rep. 290.

699

66.

held in position by a clamping-bolt, which passes transversely through the slot or mortise near the brace-bar, and forces the sides of the beam together against the brace-bar, so as to clamp it in any required position, and thereby adjust the tooth in any inclination, at the same time allowing it to yield to immovable obstacles without breaking. In the drawings, A represents one of the beams of a cultivator; B, the shank, pivoted at b; B', the tooth; C, a curved brace-bar extending in the arc of a circle outward and upward from the rear side of the shank, B, and its upper end passing vertically through a longitudinal slot or mortise, a, in the beam, A; and D, a bolt, passing transversely through the slot or mortise, and having a head, d, on one end,

and a nut, d', on the other, by which the side walls of the slot or mortise can be clamped against the brace-bar with any required force, thereby holding the latter in position when operating in the field. It is evident that in a device thus constructed and operating, the brace-bar, C, can be so clamped that the tooth will retain its position when working in arable soil, but will yield when coming in contact with an immovable obstacle, and pass over it without breaking, the shank turning back upon its pivot, b, and the brace-bar being forced up through the slot. The same arrangement also allows the shank to be adjusted in any position for deep or shallow cultivating.

"Having thus described our invention, what we claim as new, and desire to secure by letters patent, is the combination of the slotted beam, A, shank,