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one edge to the composition in one compartment and the other edge to that in the other compartment."

The claim was as follows: "An enameling box divided into two compartments by a slotted partition, and having openings at the ends in a line with the slot in the partition, all substantially as and for the purpose set forth."

The defenses relied on were that the specification was too broad, and embraced and appropriated the Marcher box; non-infringement; and prior use by Frederick W. Werner and T. C. Ladd & Co., of Brooklyn.

The first defense is based on the theory that a patent cannot be valid unless it is new in all its elements as well as in the combination, if it is for a combination. But this theory cannot be maintained. If it were sound, no patent for an improvement on a known contrivance or process could be valid. And yet the great majority of patents are for improvements in old and well-known devices, or on patented inventions. Changes in the construction of an old machine which increase its usefulness are patentable. Seymour v. Osborne, 11 Wall. 516. So, a new combination of known devices, whereby the effectiveness of a machine is increased, may be the subject of a patent. Loom Co. v. Higgins, 105 U.S. 580; Hailes v. Van Wormer, 20 Wall. 353. Two patents may both be valid when the second is an improvement on the first, in which event, if the second includes the first, neither of the two patentees can lawfully use the invention of the other without the other's consent. Star Salt Caster Co. v. Crossman, 4 Cliff. 568. Therefore letters patent for an improvement on a patented invention cannot be declared void because they include such patented invention. Much less does it lie in the mouth of a party who is infringing both the improvement and the original invention to set up the existence of the first patent as an excuse for infringing the improvement. It is only the patentee of the original invention who has the right to complain of the use made of his invention. We are therefore of opinion that the first defense to the suit must fail.

On the question of infringement, a comparison of the model of the plaintiff's patent with the model of the device shown to be in use by the defendants makes it clear that the defendants have adopted substantially the invention of the plaintiff. It would baffle the ingenuity of the most skilled expert to show a substantial difference between the invention claimed by the plaintiff and that which it is conceded that the defendants use. It may be true, as contended by the defendants, that the device used by them is in some respects better than that of the plaintiff; but this cannot relieve them from the charge of infringement, if the devices are substantially alike. The rule was well stated by Mr. Justice CLIFFORD, in delivering judgment in the case of Machine Co. v. Murphy, 97 U.S. 120, when he said that, "in determining the question of infringement, the court or jury are not to judge about similarities or differences by the names of things, but are to look at the machines, or their several devices or elements, in the light of what they do, or what office or function they perform; and to find that one thing is substantially the same as another if it performs substantially the same function, in substantially the same way, to obtain the same result, always bearing in mind that devices in a patented machine are different, in the sense of the patent law, when they perform different functions, or in a different way, or produce substantially a different result." Tested by this rule, the charge of infringement made against the defendants is clearly made out.

It remains to inquire whether prior use and want of novelty have been shown. The prior use and consequent want of novelty alleged by the defendant was the making in 1866, and the using from that date until 1871, by Frederick W. Werner, of a box for enameling mouldings in which the invention described in the patent of the plaintiff was embodied. Werner testified to this making and use, and to the further fact that, in 1874, he sold the box to Ladd, who some time afterwards began using it. The burden of proof is

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upon the defendants to establish this defense; for the grant of letters patent is prima facie evidence that the patentee is the first inventor of the device described in the letters patent, and of its novelty. Smith v. Goodyear Dental Vulcanite Co., 93 U. S. 486; Lehnbeuter v. Holthaus, 105 U. S. 94. Not only is the burden of proof to make good this defense upon the party setting it up, but it has been held that "every reasonable doubt should be resolved against him." Coffin v. Ogden, 18 Wall. 120, 124: Washburn v. Gould, 2 Story, 122, 142. The proof of prior use in this case depends on the testimony of Werner and T. C. Ladd. The contrivance to which the testimony of these witnesses refers is not produced, nor any model of it. It is merely represented in a drawing made by Werner six years after he had sold the box to Ladd. These two witnesses are contradicted by four others who were engaged in the factory where the box was used, and who had frequently seen the box referred to when in use, and the mouldings enameled by its use. Their testimony shows that the distinctive element in Wallick's contrivance was not used in the box, but that it was substantially the old Marcher box. The defendants have, therefore, failed to show by preponderance of proof, much less beyond reasonable doubt, the prior use on which they rely. On the contrary, the weight of the evidence is against this defense. Decree affirmed.

(118 U. S. 25)

KEYES and another v. GRANT and another.
Filed April 19, 1886.

1. PATENTS FOR Inventions-INFRINGEMENT ACTION AT LAW-PRIOR USE-SPECIFICATIONS QUESTION FOR JURY.

Whether the specifications of a patent, and the drawings and the publication introduced to show prior use, in an action at law to recover damages for infringement of a patent, describe the same thing, is matter of fact, to be submitted to the jury under suitable instructions from the court.

2. TRIAL-DIRECTING VERDICT EVIDENCE.

It is error to instruct the jury to find a verdict for the defendant where there is evidence upon both sides of the issue, and where, had the issue been submitted to the jury, and a verdict found for the plaintiff, it would not be set aside for insufficiency of evidence.

In Error to the Circuit Court of the United States for the District of Colorado.

G. G. Symes, Geo. Harding, and F. T. Chambers, for plaintiffs in error. B. F. Thurston, Thos. Macon, E. T. Wells, R. T. McNeal, and Whit. M. Grant. for defendants in error.

MATTHEWS, J. This was an action at law to recover damages for an al.eged infringement of letters patent No. 121,385, issued November 28, 1871, to the plaintiffs, for an improvement in furnaces for smelting lead and other ores. There were several defenses set up by way of pleas, but the two chiefly relied on were that "the plaintiffs' pretended invention" had been described "in a certain printed publication entitled System der Mettallurgie,' von Dr. J. B. Karsten, published at Berlin, Prussia, in 1831-32, in 5 volumes, with an atlas of plates, I., at pages 315, 316, 317, 318, 319, 320, 321, and 322, of volume 3, and pages 150 to 166, both inclusive, and 166 to 180, both inclusive, of volume 5, and figures 479, 480, 481, 482, 483, 484, 473, 474, 475, on plate XXI., and figures 850 to 868, both inclusive, of plate XLI. of the atlas accompanyng said work;" and, secondly, that, in view of the state of the art at the date of the alleged invention, the improvement was not patentable, as not requir ing the exercise of invention. The issues came on for trial before a jury, and there was a verdict for the defendants, and judgment thereon, to reverse which this writ of error is brought.

It appears from the bill of exceptions that the plaintiffs read in evidence

the patent sued on, the substantial part of the specifications attached to which was as follows: "The object of this invention is to provide a novel, simple, and improved method of tapping or withdrawing lead and other metals, when in a molten state, from the bottom of a smelting furnace, so that the metal may be obtained therefrom in a clean state, and also that the formation of hard matters or incrustations on the sides and bottom of the furnace may be avoided. The nature of this invention consist in the use or employment of a basin of suitable dimensions, located a short distance from one side of the furnace, and at a suitable elevation above the bottom of the furnace; which said basin is connected with the furnace by means of a tube which extends from the bottom of the basin to the bottom of the furnace. As the molten metal fills the lower part of the furnace it rises to the same level in the tube until it reaches the basin, from whence it may be removed as clean metal. To enable others skilled in the art to make and use our invention, we will proceed more particularly to describe the same: The figure represents a sectional elevation of a portion of a smelting furnace with our improvements. A represents the furnace, which may be of ordinary or common construction. B is a basin of suitable dimensions, located at the top of an extension built on one side of the furnace, and at a suitable elevation above the bottom of the furnace. The basin may be constructed of any material suitable for receiving and holding the molten metal. Extending from the bottom of the basin, B, to the bottom of the furnace, A, through the above-mentioned extension, is a tube, C, which connects the basin with the furnace, and which may be made of iron, clay, or other material suitable for the purpose. The metal as it melts falls to the bottom of the furnace. As the surface of the molten metal rises within the furnace it rises to the same level in the tube, C, until it reaches the basin, B, from which it may be removed with a ladle. The advantages of this invention are obvious, as by this means the metal is tapped or withdrawn from the furnace free from impurities; and it will also be seen that the difficulties arising from the formation of hard matter or incrustations on the bottom or sides of the furnace, occasioned by the usual method of drawing off a large quantity of molten metal at one time, are obviated. Having thus described our invention, what we claim as new, and desire to secure by letters patent of the United States, is the method of tapping or withdrawing molten lead or other metals from a smelting furnace by means of the basin, B, and tube or connection, C, in combination with the furnace, substantially as shown and described."

The drawing referred to is as follows:

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Albert Arents, one of the plaintiffs, testified to his own qualifications as an expert in the art of smelting, and also "that the obtaining of clean metal from the side of a furnace of ordinary construction, automatically, by the means described in the specifications in the patent, was novel and useful, and a great improvement over the old method of withdrawing clean metal from smelting furnaces; that the specifications were sufficiently full, clear, and precise to enable persons skilled in the art to which they appertained, to-wit, the art of smelting, to construct a furnace which would produce the useful result claimed by the patent, to-wit, the obtaining clean metal automatically from a smelting furnace, when in operation of ordinary construction; that a furnace of ordinary construction, as it existed at the date of plaintiffs' patent, as defined by the art of smelting, so far as is material to this case, consisted of an inner hearth, with an open breast or sump, into which the molten masses of the furnace, when fused, collected and settled according to their specific gravities; that the front of a smelting furnace was that part of the furnace where the slag*ran and was handled by the smelter; that the back of the furnace was opposite to the front, and that those parts of the furnace to the right and left were known and called the sides;' that the slag ran off through a spout over the open breast of the furnace in front, and the clean metal was tapped periodically from a tap-hole at the bottom of and from the side of the furnace; that each part in the construction of the furnace had its particular functions, which were important, as understood and known and taught in the art of smelting at that time, to-wit: the front was the working door of the furnace, and was where the slag ran off and was handled; the back and sides where the tuyeres were situated, through which the blast was forced into the furnace, and the clean metal was periodically drawn or tapped from one side or other of the furnace." 99

The plaintiff then introduced a model on the scale of one inch to the foot, in sections, showing what a furnace of ordinary construction was at the date of the patent, as known in the art of smelting, showing the improvement of the plaintiffs, and the old mode of tapping, of which the following are drawings:

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The plaintiffs then corroborated this testimony of Arents by that of numer ous experts, and gave evidence tending to prove infringement by the defendants, and rested their case.

The defendants put in evidence certain extracts from the text and illustrative drawings of smelting furnaces of the treatise upon metallurgy by Dr. J. B. Karsten, published at Berlin in 1831-32, mentioned in the plea, translated as follows:

"(318) The forehearth is that part of the crucible projecting in front of the fire-walls of the furnace. Crucible furnaces are those shaft furnaces in which the crucible is entirely on the inside. They are divided into eye-crucible furnaces and tap-crucible furnaces. The former have an eye in the front wall from which the slag flows continuously, the metal and matte being tapped off at intervals into basins. The tap-crucibles furnaces are those in which the metal, matte, and slag are all tapped off from time to time. Sump furnaces are those shaft furnaces in which the crucible is partly in the furnace and partly in front of the furnace. The slag runs off continuously over the forehearth. The metal and matte are tapped off into receiving vessels or tapbasins. Sometimes the sump furnaces are not provided with tap-basins, and the metal in them is dipped with ladles direct from the forehearth. Spur or channel furnaces are shaft furnaces without a crucible. The molten contents flow through the eye directly from the furnace hearth into receiving vessels. These different furnaces can be more advantageously studied from drawings than from written descriptions.

"(319) In some countries the crucible furnace is preferred; in others the sump furnace. It is not advisable to use the channel furnace when clean metal is produced. With this furnace the metal is not protected from oxidation. It is used chiefly in smelting copper ores, with a view to producing copper matte. The drawings, figures 461 to 463, represent an eye-crucible furnace. The slag runs continuously through a hole in the front wall. The metal and matte are tapped off at intervals through a hole in the side of the crucible. The drawings, figures 464 to 466, represent an eye-crucible furnace, which differs from the former in that the tap-hole is in the front wall and at the bottom of the crucible. The drawings, figures 467 to 469, represent a tapcrucible furnace. The metal, matte, and slag are tapped off from time to v.6s.c.-62

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