Lowell v. Lewis

CASE NAME	LOWELL v. LEWIS
COURT	Circuit Court, D. Massachusetts
CITATION, DATE	15 F. Cas. 1018; 1817 U.S. App. LEXIS 169. May, 1817

PROCEDURAL HISTORY
TRIAL COURT:		APPEAL COURT (for appeal cases only):
PLAINTIFF	Lowell	APPELLANT	@
DEFENDANT	Lewis	RESPONDENT	@

DESCRIPTION OF EVENTS
The present action is brought by the plaintiff for a supposed infringement of a patent-right, granted, in 1813, to Mr. Jacob Perkins (from whom the plaintiff claims by assignment) for a new and useful improvement in the construction of pumps.

REMEDY SOUGHT	Ruling for infringement of a patent-right, granted, in 1813, to Mr. Jacob Perkins (from whom the plaintiff claims by assignment) for a new and useful improvement in the construction of pumps.

ARGUMENT FOR PLAINTIFF
"the exact structure and position of a valve in a square pump, uniting by triangular and butterfly forms, is not known to have been used at any time previous to his invention, in the precise manner, in which Mr. Perkins uses them. In short, the combination of structure, which he uses, is alleged by the plaintiff's witnesses to be new."

ARGUMENT FOR DEFENDANT
The defendant asserts, in the first place, that the invention is neither new nor useful; and, in the next place, that the pumps used by him are not of the same construction as those of Mr. Perkins, but are of a new invention of a Mr. Baker, under whom the defendant claims by assignment. The defendant, however, has asserted a much more broad and sweeping doctrine; and one, which I feel myself called upon to negative in the most explicit manner. He contends, that it is necessary for the plaintiff to prove, that his invention is of general utility; so that in fact, for the ordinary purposes of life, it must supersede the pumps in common use.

COURT OPINION
"If the plaintiff is entitled to recover, the patent act gives him treble the actual damages sustained by him; and the rule for damages is, in this case, to allow the plaintiff treble the amount of the profits actually received by the defendant, in consequence of his using the plaintiff's invention. The jury are to find the single damages, and it is the proper duty of the court to treble them in awarding judgment. And let the damages be estimated as high, as they can be, consistently with the rule of law on this subject, if the plaintiff's patent has been violated; that wrong doers may not reap the fruits of the labor and genius of other men." "To entitle the plaintiff to a verdict, he must establish, that his machine is a new and useful invention; and of there facts his patent is to be considered merely prima facie evidence of a very slight nature. He must, in the first place, establish it to be a useful invention; for the law will not allow the plaintiff to recover, if the invention be of a mischievous or injurious tendency." "All that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word "useful," therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention. But if the invention steers wide of these objections, whether it be more or less usefull is a circumstance very material to the interests of the patentee, but of no importance to the public. If it be not extensively useful, it will silently sink into contempt and disregard." "The next question is, whether Mr. Perkins's pump be a new invention. In the present improved state of mechanics, this is often a point of intrinsic difficulty. It has been often decided, that a patent cannot be legally obtained for a mere philosophical or abstract theory; it can only be for such a theory reduced to practice in a particular structure or combination of parts. In short, the patent must be for a specific machine, substantially new in its structure and mode of operation, and not merely changed in form, or in the proportion of its parts." "the patentee is bound to describe, in full and exact terms, in what his invention consists; and, if it be an improvement only upon an existing machine, he should distinguish, what is new and what is old in his specification, so that it may clearly appear, for what the patent is granted.... If, therefore, the description in the patent mixes up the old and the new, and does not distinctly ascertain for which, in particular, the patent is claimed, it must be void; since if it covers the whole, it covers too much, and if not intended to cover the whole, it is impossible for the court to say, what, in particular, is covered as a new invention.... on examining this patent, I at present incline to the opinion, that it is sufficiently described, in what the patented invention consists." "A question nearly allied to the foregoing, is, whether (supposing the invention itself be truly and definitely described in the patent) the specification is in such full, clear, and exact terms, as not only to distinguish the same from all things before known; but "to enable any person skilled in the art or science, of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same." This is another requisite of the statute (section 3), and it is founded upon the best reasons. The law confers an exclusive patent-right on the inventor of any thing new and useful, as an encouragement and reward for his ingenuity, and for the expense and labor attending the invention. But this monopoly is granted for a limited term only, at the expiration of which the invention becomes the property of the public. Unless, therefore, such a specification was made, as would at all events enable other persons of competent skill to construct similar machines, the advantage to the public, which the act contemplates, would be entirely lost, and its principal object would be defeated." "By the common law, if any thing material to the construction of the thing invented be omitted or concealed in the specification, or more be inserted or added, than is necessary to produce the required effect, the patent is void. This doctrine of the common law our patent act has (whether wisely, admits of very serious doubts) materially altered; for it does not avoid the patent in such case, unless the "concealment or addition shall fully appear to have been made for the purpose of deceiving the public." Section 6. Yet certainly the public may be as seriously injured by a materially defective specification resulting from mere accident, as if it resulted from a fraudulent design." "The manner, in which Mr. Perkins's invention is, in his specification, proposed to be used, is in a square pump, with triangular valves, connected in the centre, and resting without any box on the sides of the pump, at such an angle as exactly to fit the four sides. The pump of Mr. Baker, on the other hand, is fitted only for a circular tube, with butterfly valves of an oval shape, connected in the centre, and resting, not on the sides of the pump, but on a metal rim, at a given angle, so that the rim may not be exactly in contact with the sides, but the valve may be. If from the whole evidence the jury is satisfied, that these differences are mere changes of form, without any material alteration in real structure, then the plaintiff is entitled to recover; if they are substantially different combinations of mechanical parts to effect the same purposes, then the defendant is entitled to a verdict. This is a question of fact, which I leave entirely to the sound judgment of the jury."

DISPOSITION OF CASE
Verdict for the defendant.

ECONOMIC ANALYSIS

    Mainly cited for establishing what is considered useful.
    Also elaborates on what is required to be in the patent to make the patent valid.
    In the decision itself, the court decided not to consider the case patent infringement since the new pump was different enough.