George Shiras, Jr.

“ He claims that the difference is this: that the machine in a horizontal postion will break the hides so that they can be used for useful purposes in the arts, and that the machine standing in a vertical position will not accomplish this work. To use his phrase,-the phrase of the patent law,-the machine is not operative; or, to use a phrase equally accurate, and perhaps more easily comprehended, that this machine will not do the work which it is appointed to do. ”

“ Our attention is next directed, by the assignments of error, to the instructions given on the subject of damages. Of course, it will not be necessary for the jury to enter into this inquiry unless they find the question of infringement in favor of the plaintiffs. But as, from the nature of a trial by jury, the court will be unable to anticipate the conclusion which the jury may reach on that question, explanations will have to be given to the jury as to the measure of damages applicable in such cases. ”

“ In equity, the complainant is entitled to recover such gains and profits as have been made by the infringer from the unlawful use of the invention; and since the act of July 8, 1870, in cases where the injury sustained by the infringement is plainly greater than the aggregate of what was made by the defendant, the complainant is entitled to recover the damages he has sustained in addition to the profits received. ”

“ The importance attributed in the patent to the position of the machine as a vertical one is seen in the fact that the term 'vertical' is used no less than ten times, while in the definition of the patent given by the learned judge to the jury the word does not once appear. ”

“ The plaintiffs describe their invention as a new and improved machine for converting raw hides into leather, of that class which is used for belting, lacings, and other purposes, where it is necessary to preserve the native strength and toughness without destroying or impairing the natural fibres or grain of the leather. ”

“ The patent calls for, first, 'a vertical rotary shaft, with means by which hides can be fastened to its periphery.' The learned judge's reading is 'that the invention consists of a shaft with means by which hides can be fastened to it,' omitting the term 'vertical.' The patent calls, in the second place, for 'a vertical frame or crib, with vertical pins or rollers.' The instruction given was 'there are arranged a number of bars, which shall contain the roll of hides after it has been wrapped around the central shaft' ”

“ In the third place there is a plunger or false head or contracting device, whatsoever you may call it,-a piece of metal or of wood,-which so moves as to reduct the space within which the hides are contained for the purpose of squeezing them sidewise. That is all there is in the machine, and any machine which contains these elements is an infringement of the plaintiffs' device, and is a violation of law. I need not say to you that the defendants' machine is such a machine. It contains a central shaft and a device for fastening hides to it. ”

“ The defendants gave evidence tending to show that a machine made in conformity with plaintiffs' specifications and claims would not operate as a successful machine, to which the plaintiffs replied by evidence tending to show that a machine made after the description contained in the patent would and did operate successfully. ”

“ Justice Miller, speaking for the court, used this language: 'Whatever may be our personal opinions of the fitness of the jury as a tribunal to determine the diversity or identity in principle of two mechanical instruments, it cannot be questioned that when the plaintiff, in the exercise of the option which the law gives him, brings his suit in the law in preference to the equity side of the court, that question must be submitted to the jury, if there is so much resemblance as raises the question at all.' And reference was then made to the case of Bischoff v. ”

“ If you find that a machine made with this shaft, crib, and weight, and standing so that the shaft is vertical,-that is to say, is upright,-will not break hides, will not do the work which it is expected to do, then, in that case, the defendant is entitled to your verdict. ”

“ St., are applicable to a case where the patentee has not sold any machine, nor licensed others to use his invention, but has chosen to enjoy his monopoly by a personal and sole use of the patented machine. In such a case, if the articles produced by the operation of the patented machine are not themselves claimed as new and patented articles of commerce, there may be a question whether the statute has any applicability. ”

“ You must, therefore, with unprejudiced minds, enter upon the consideration of the question, when you retire to your room, whether there be any difference in the operation of these two machines,-the one standing vertical or erect, the other standing horizontal or lying upon its side. ”

“ Upon this evidence the court instructed the jury as follows:
'The course taken by the plaintiffs to show the amount of damages is a proper course. They undertake to show the value of this invention to any person using it, and the law deems it a fair inference that whatever value has been received by the defendants through the use of this invention so much has been taken from the plaintiffs, and they are entitled to have it restored to them. Upon the amount of those damages you have the testimony, if I remember right, of only one witness. Mr. ”

“ It has other devices also for fastening other hides, but that constitutes no excuse for the use of the one single device for fastening hides. It has the bars surrounding the central shaft, and which confine the hides after they are would about that shaft. Those bars also have conveniences and means for adjusting them inwardly and outwardly. It also has a movable head, which operates to reduce the space in which the hides ARE, OR, IN MOE POPULAR PHRASE, TO SQUEEZe the hides together ”