|
Description: |
| This patent is an improvement of patent #5,684X.
Robert McKelvey was the administrator for the estate of Austin Parker, deceased.
Patent Litigation
Zebulon Parker v. William Hatfield
Summary:
“The said special Master Commissioner reports to your honorable Court, that in pursuance of the order made in said cause at the December term of said Court, A. D. 1843, he has examined said cause; and that from the pleadings, exhibits, and testimony on file in said cause, he finds :-That on the 19th day of October, 1829, a patent was issued to Zebulon Parker and Austin Parker for “ an improvement in the application of hydraulic power,” which improvement consists, according to the specification of the patent: 1st. In placing several wheels, (always an even number) on one shaft, and conducting the water to them through spouts which wind between concentric cylinders, producing thereby a whirling or vertical motion of the water in the same direction with that of the wheels; 2nd. In a contrivance for introducing the water into a single horizontal wheel with a circular motion; together with an improvement in the construction of the wheel itself; 3rd. In a contrivance for applying the same principle to common wheels now in use.
At a subsequent period Austin Parker deceased, and his administrator, Robert McKelvey, conveyed to Zebulon Parker all his interest in the invention and subsequent improvements, by deed dated November 2, 1839. On the fourth day of October, 1843, the patent was extended to the term of twenty-one years from its original date, upon the petition of Zebulon Parker.
On the 31st. December, 1838, William Hatfield obtained a patent for an improvement on Parker's percussion and reaction wheel, consisting, according to the specification, of the peculiar form of the buckets, and the double spiral scroll placed between them for directing the water.
In his answer to the bill filed against him by the complainant, the defendant claims that his invention was denominated “an improvement on Parker's percussion and reaction wheel,” by mistake, and that the wheel for which he obtained his patent was wholly his own invention.
The first question asked by the Court in their order is, “whether the invention claimed by the complainant was new and useful; and should he so find, that he [the Commissioner) then report the particulars in which it was new, and wherein consisted its utility.”
The particulars in which this part of the invention is claimed to be new are, the position of the shaft, (being horizontal) and the number of wheels attached thereto. Its utility consists in the convenience of attaching the shaft directly to the saw without the intervention of gearing; in avoiding friction, by placing the wheels in pairs, so that the water will press equally each way in a direction parallel with the shaft, and in permitting the power of a low head as applied to the same shaft to be increased to the utmost extent of the supply of water, by increasing the number of pairs of wheels.
The next particular of the invention claimed by the complainant, to which the first question of the Court will be applied, consists of the concentric cylinders and the manner of supporting them.
No evidence has been adduced to show that this part of the invention is not new, nor can there be a doubt of its utility in the sense which we have assumed as belonging to the word. The particulars in which this part of the invention is claimed to be new, are, a hollow cylinder with an interior diameter nearly equal to that of the wheel, another cylinder which is solid, (except the cavity for the shaft to run in,) and concentric with the first. These cylinders are placed between the two wheels and serve to give the water a circular yr whirling motion by passing between them before striking the wheels. Connected with these cylinders and essential to them is the manner of supporting them, which is simply by enclosing their ends in plank rims attached to the framework of the forebay. The utility of these cylinders consists in the whirling or vertical motion which they give to the water before it reaches the wheels. This motion is in the direction in which the wheel moves and causes the particles of water as they pass out at the issues to act at a greater angle against the inner sides of the buckets. Every wheel propelled by the action of the water upon the inclined surfaces of the buckets placed around its circumference, with issues for the water to pass freely out, may be said to act by percussion. For the particles of water being urged by the pressure of those behind, in endeavoring to escape in every direction, outwardly, act upon these inclined surfaces just as the force of the water is exerted upon the lee board of a boat crossing the stream by the force of the current. Now it is clear that if by any means a direction be given to the current, which shall coincide with that of the boat, before it strikes the board, it will serve to propel the boat faster. This is just the effect of the cylinders in question, but it is by no means clear that the inner one is essential to produce this result.
The next particular of the invention claimed by the complainant is the spouts which conduct the water into the wheels from the penstock, and their spiral terminations between the cylinders.
This part of the invention is, also, both new and useful. The novelty of these spouts consists of their spiral terminations. Their utility consists in their conveying the water more easily and with less friction to the inside of the wheels, where it can act at once upon the buckets.
These particulars have reference in every case to the arrangement of several wheels upon a horizontal shaft; similar particulars are claimed by the complainant in the invention, as applied to single horizontal wheels upon a vertical shaft; and to these particulars the foregoing observations will apply in the same way.
Another part of the invention claimed by the complainant is a contrivance for applying the principle of vertical, or circular motion of the water to reaction wheels now in use. This contrivance is both new and useful in the sense in which those above described are so.
Its utility consists in giving to the water a circular motion as it enters the wheel, to act upon the buckets or issues.
The next question proposed by the Court is “ whether the complainant's patent is valid.” There is nothing in the evidence which goes to show its invalidity. If then it is invalid, it must appear on the face of the patent itself. The two principal considerations to be applied to the question are, whether the invention is one of a nature to entitle the inventor to a patent therefor; and whether the provisions of the law are complied with in the manner of making the specifications. And First :-—the invention is one which consists mainly of
وو
these parts : Ist, a contrivance for applying the water more advantageously to the buckets of the wheel, by giving it a whirling motion; 2nd, a combination of wheels upon one shaft, for the purpose of increasing power and avoiding friction; 3rd, an improvement in the reaction wheel, by making the buckets as thin at both ends as they safely can be made, and the rim no wider than sufficient to cover them.
By the sixth section of the act of Congress passed July 4th, 1836, it is provided that “any person or persons having discovered or invented any new and useful art, inachine, manufacture, or composition of matter, or any new and useful improvement in any art, machine, manufacture, or composition of matter," &c.
The first part of this invention may very properly be denominated a “new and useful machine," being a contrivance consisting of cylinders and their supports with the spiral spouts between. It can be described, made and sold ; and each and every part, whether combined or separate, may be made the subject of exclusive right, and is therefore clearly entitled to a patent.
The second part of the invention may properly be called an improvement on a machine, by means of a new combination of things which were before in use and well known. It is true the inventor entitles it “ the compound vertical percussion and reaction wheel," but this title is evidently applied to the COMBINATION, since the several parts consisting of the shaft and wheels were well known before.
In the case of Moody vs. Fisher 2 Mason 112, Judge Story says, “Where a patent is for a new combination of existing machinery, or machines, and does not claim or specify any improvement or invention except the combination, proof that the machines or any part of their structure existed before forms no objection to the patent, unless the combination has existed before ; for that reason the inventor is limited to the combination.” This part of the invention has therefore nothing in its nature which destroys the right of the inventor to a patent.
The third part of the invention is the improvement in the reaction wheel by making the buckets as thin at both ends as they can safely be made and the rim no wider than sufficient to cover them.
This part of the invention claimed by the complainant does not seem to be of a character to entitle the inventor to a patent. It is called an improvement, but it contains nothing which sufficiently differs from the old wheel to make in any sense a new machine of it. It consists merely of a slight variation or change in the form or proportions of a wheel long in use, without in any way changing the mode by which the water acts upon the wheel, nor the effect of such action. Judge Washington in Gray & Asgood vs. James and others, 1 Pet. C. C. R. 396, says, “what constitutes a difference in principle between two machines is frequently a question of difficulty, more especially if the difference in principle is considerable and the machinery complicated. But we think it may safely be laid down as a general rule that where machines are substantially the same, and operate in the same manner to produce the same result, they must be in principle The same. I say substantially, in order to exclude all formal differ
I ences, and when I speak of the same result, I must be understood as meaning the same kind of result though it may differ in extent. So that the result is the same, according to this definition, whether one produce more nails for instance in a given time than another, if the operation is to make nails."
This wheel then claimed by the complainant must be considered as substantially the same wheel as the one before in use, and therefore not entitled to a patent.
Secondly :-Is the invention so described in the specification as to correspond with the requirements of the siatute? These requirements are, that it shall be in such clear, full and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound and use the same. It would be difficult to imagine a description more clear and distinct than that given of the complainant's invention in the specification of his patent. The form, proportions and mode of construction of every part seem to be as accurately described as the nature of the case will permit. The patent cannot be objected to on this account. The only point of doubt then as to the validity of the patent is, whether that part of the invention said to consist in the "improvement of the reaction wheel," not being entitled to a patent, is sufficient to invalidate the whole. Judge Story in Moody vs. Fiske, 2 Mason 112, says, “when the patentee claims anything as his own invention in his specifications, Courts of law cannot reject the claim; and if it is included in the patent and found not to be new, the patent is void; however small or unimportant such asserted invention may be; where he sums up the particulars of his invention and his patent covers them, he is confined to such summary; and if some part which he claims in his summing up as his invention proves not to be in fact his invention, he cannot be permitted to sustain his patent by showing that such part is of sligit value or importance in his patent. His patent covers it, and if it be not new the patent must be void.” Now the alleged improvement in the water wheel consists in a simple change of form of the buckets and the proportions of the rim. This change, though slight and not involving a sufficient difference from the old wheel to form a new machine in any sense, and therefore not entitled to a patent, is nevertheless, so far as there is any alteration, the invention of the complainant, so that he does not claim any thing that he has not invented ; though a part of that invention would not be entitled to a patent. The said Commissioner is therefore of opinion that the patent in this respect is valid; though this opinion is expressed with some hesitation.
The third question of the Court is “ whether the invention claimed by the defendant, or the water wheel made, vended, or used by him is an infringement of the complainant's rights under his patent, and if so, wherein." The improvements claimed by the defendant in the summing up of his specification, are the peculiar form of the buckets, and the double spiral scroll placed between them.” The specification itself however describes ihe wheels as placed in pairs on a VOL. XII, 3RD Series.- No. 5.- NOVEMBER, 1546.
28
[ocr errors]
horizontal shaft, and the scroll as being placed in a “concave” resem bling an ogee. The spiral scroll, the combination of the wheels, and the “concave," are all of them, undoubtedly, infringements on the rights of the complainant under his patent; the two first items being precisely the same as those described in the patent of the complainant, and the concave” being nothing less than the “outer cylinder" of the complainant, and which principally acts in producing the vertical or whirling motion of the water.
The fourth question of the Court is the amount of damage sustained by the complainant, by reason of the infringement of his rights under said patent, by the defendant.
The only evidence touching the number of wheels made and put into operation by defendant is that of S. R. Chandler, and of Martin Chandler, Jr. The former says that he knows of the defendant building a mill on a fork of Salt Creek, in Muskingum county, and others in the neighborhood ; that he has seen the wheels used by Hatfield, and that they are identical with his own (one of complainant's,) except his was made of iron, and those put in by defendant of wood. The latter says, he never saw but three of defendant's wheels in operation, and he thinks there is no material difference between them and complainant's. It would seem then, that no more than three wheels have been proved to have been put into operation by the defendant, the damages for which, at the price demanded by the complainant for each right would amount to seventy five dollars.
In the month of July, 1844, at the request of the complainant, the undersigned notified the parties that he would attend at the house of the complainant for the purpose of witnessing a series of experiments having reference to this cause. Owing to the alleged illness of the defendant he did not attend at the time appointed, and afterwards protested against the experiments made in his absence being used as evidence. In the month of May last, after due notice to both parties, the experiments were repeated, defendant being still absent.
After full investigation of the matter the undersigned became satisfied that the experiments (of which the object was to test the relative merits of complainant's invention) had no bearing upon the question at issue between the parties, and therefore no notice was taken of them in the investigation of the subject. All of which is respectfully submitted.
This cause came on to be heard on the original, amended and supplemental bills of complainant, the answer of the defendant, the exhibits and testimony, the report of the Special Master herein, and the exceptions thereto; and was argued by counsel. Whereupon the Court, on consideration of the premises, do find; That the said complainant, and the said Austin Parker, deceased, were the original inventors of the said several improvements in said bills mentioned and described. The Court do further find that letters patent have duly issued from the United States, as set forth in said bills, and that all the rights and exclusive privileges secured thereby have become vested solely in the said complainant. The Court do further find, that the said several improvements, to wit: -1, The application of two, four, six, or more reaction wheels, of iron or wood, on one horizontal shaft, for saw mills and other purposes;-2, The principle of introducing water into reaction wheels, with a vertical or circular motion, by concentric cylinders enclosing the shaft, or other means ;-3, The application of air-tight cases, or boxes, denominated drafts, as enclosures of reaction wheels, as described in the schedule of one of said letters patent, and mentioned in said supplemental bill, are new and useful improvements in the application of hydraulic power. The Court do further find that the letters patent of the defendant set forth in his answer herein, embrace no new or useful improvement, and are therefore void; and that the said defendant, in making, using, and vending his supposed improvements, is infringing the rights and exclusive privileges of the said complainant.
It is therefore ordered, adjudged, and decreed by the Court here, that the report of the said Special Master herein be, and the same is hereby, approved and confirmed, and the exceptions thereto be, and the same are hereby, overruled. It is further adjudged and decreed that the several letters patent of the said complainant are good and valid in law, and secure to the said complainant the exclusive right and privilege of making, using, and vending the improvements aforesaid. The Court do further adjudge and decree that the said defendant be, and he is hereby, enjoined from further making, using or vending reaction water wheels to be used in the manner of those heretofore made by him, or any other way infringing the exclusive privileges aforesaid of the said complainant during the time limited in said several letters patent of the said complainant for his use. And it is further ordered, adjudged, and decreed that the said defendant, within twenty days from the rising of this Court, pay the costs of this suit, and in default thereof that execution issue as in cases at law.”
|
|
