# Werner v. King/Opinion of the Court

* Court Documents
* Case Syllabus
* Opinion of the Court
United States Supreme Court
96 U.S. 218
Werner v. King
Letters-patent were issued to George E. King on the 26th February, 1867, for a new and useful improvement in fluting machines. He surrendered them, and on the 23d June, 1868, had two patents granted him as reissues of the original. The first of these, No. 3000, was for the machine by which the article of fluting and puffing described in the patent was made; and the other, No. 3001, was for the article made as described. The record before us is that of a suit in chancery brought by him against Robert Werner for an infringement of both these patents. Werner defended on the ground that the patents were void for want of novelty, and also by denying the infringement. The Circuit Court held that the defence was sustained as to the patent for the article produced, on the ground that it was not new, but rendered a decree in favor of King as to the reissued patent, No. 3000, for the machine. Werner alone appeals, and seeks a reversal of the decree on both the grounds urged below.
We will examine the question of infringement first; for, if the appellant has not infringed the patent of the appellee, he can very well leave to others the task of contesting its validity.
The appellant is also patentee of a machine for crimping and fluting, which produces an article similar to that of the appellee, and parts of the machine by which the purpose is effected are substantially the same as his. If on looking at the machine in detail there is such substantial identity as to all its parts, the appellant must be held to be an infringer, for his patent bears a date more than four years subsequent to that of the appellee.
The appellee's schedule declares that his invention is designed for making puffing applicable to shirt-bosoms, trimming, or other purposes of dress, in which the article, as it issues from the machine, is (without having recourse to laundering) delivered in a complete form, either singly, or in two or more series or rows, composed of flattened borders with flutes running along their inner edges, and puffed or wrinkled surfaces between the flutes.
The fabric to be fluted and puffed is drawn between a pair of rollers moved by a crank, the rollers, where they approach each other, having flutes or grooves so arranged as by their pressure on the fabric as it passes between them to make the fluting and to flatten it. These grooves on the rollers, while they are continuous in the annular or circumferential direction of the rollers, are interrupted in their longitudinal direction by smooth spaces, so that the material passing between the rollers is fluted or crimped in parts of its width and left plain in other parts which do not pass over the grooves. It is obvious, if this plain portion of the fabric, as it passes over the plain surface of the roller, can be so presented as to be compressed laterally, or in any other manner to have more of the material thus forced into the machine than is necessary to cover this plain surface, that when it comes out of the machine, while the fluted parts are fixed and flattened, the intermediate portion must present a puffed and irregular surface. It is this effect which is desired, and which King, by an additional contrivance, produces; and it is this contrivance which, in combination with the fluting-rollers already described, but which are not new, he claims as his invention.
This part of the machine consists of a double-plated segment of a hollow cylinder, the arch of which is upwards, so arranged with regard to the fluting-rollers that the part of the material which is intended to be puffed and not fluted, passing first between the plates of this arched guide, is presented to the plain surface of the roller, with the width of the strip increased by the difference between the lines of the curved or arched surface of the cylinder and the plain or horizontal surface of the roller which receives it. The result is, that when the material comes out of the machine this redundancy of the plain part of it assumes the form of irregular puffs, which is the end to be attained. All this is very well described, and specific references illustrated by drawings are given to the various parts of the machine.
'What I claim as new,' he says, in conclusion, 'and desire to secure by letters-patent, is: the guide, E, constructed with one or more curved or arched portions, a, in combination with suitable fluting-rollers, substantially as herein set forth for the purpose specified.'
The schedule of Werner's patent, which is numbered 134,621, describes the same kind of fluting-rollers, and is designed to produce, while passing through them, what he calls a crinkled surface in that part of the fabric not fluted. But in his machine the redundancy of material is produced by passing it over a smooth, flat surface, from which it is presented to the fluting-rollers; and while so passing over this flat surface a detent, or finger, is applied to that part of it not to be fluted, which, by reason of the pressure of a spring, holds back this part of the material. It is thus formed into V-shaped waves or crinkles, more or less irregular, whereby the desired effect is produced.
It will be observed that the main features of both machines are the same, and that whatever is new in either is ingrafted upon a fluting-machine, many of which were patented long prior to both of them.
The question we are now to consider is, whether the flat surface and finger, or detent, of Werner are the mechanical equivalents of the double-plated segment of a cylinder used by King, within the principles of the patent law on that subject.
It is said that they are equivalents, because they produce the same result. The fact stated may be doubted; for an examination of numerous pieces of textile fabrics passed through both machines show in those crimped by Werner's the regular V-shaped crinkle, with the acute angle pointing in the same direction with great uniformity; while in those passed through King's the puffs are elevated, wavy, and irregular. But since the patent for the article is not contested here, this difference is of no other importance than as it illustrates the difference in the mode of operation of the two machines.
It is further said, that the difference is merely one of form; and cases are cited in which this court has held that a mere variation in the form or shape of the instrument cannot be successfully used to evade the monopoly. But where form is of the essence of the invention, it is necessarily material; and, if the same object can be attained by a machine different in form where that form is inseparable from the successful operation of the instrument, there is no infringement. Winans v. Denmead, 15 How. 330. In King's patent, the result sought is wholly due to the guiding arch, through which the fabric is carried. It is this semicircular form which gives the redundancy of material necessary to the puff; and no guide which did not in some manner give the material an arched or curved shape as it passed into the fluting-rollers can be considered as a part of King's patent. It is not only necessary to an infringement that the arrangement which infringes should perform the same service, or produce the same effect, but, as Mr. Justice Nelson said in Sickles v. Borden (3 Blatchf. 535), it must be done in substantially the same way. Burr v. Duryee, 1 Wall. 531.
The difference in the shape or form of the guide in these machines is not the only one. They operate on entirely different principles. King's instrument is, to some extent, automatic.
The strip of the fabric to be used, being once between the upper and under plates of his arched guide, cannot escape, and it must, in passing into the fluting-rollers, present the same amount of redundant material, whatever may be the elasticity or rigidity of the fabric. A piece of leather would, if it passed through, present precisely the same elevation of the arch, and length of line of the semicircles, as a piece of gauze. Whereas, under the operation of the detent of Werner, the length of the lines and the acuteness of the angle of the V would vary with the resisting strength of the fabric and the power of the spring which pressed the detaining finger.
Another marked difference is, that in King's machine the redundant fulness which makes the puff is produced by a pressure which is uniform over the surface of the fabric, the two plates giving it the exact form required, and no other; while Werner's finger seizes the fabric in the centre of the part to be crinkled, and by pulling on it at this central point, as it is dragged in between the rollers, enough of the material is drawn in from the edges towards the centre to create the redundancy necessary to the puff or crinkle. This is done by the material passing over a flat, smooth surface; and while on this flat plate the finger is applied to it, and detains or draws to this central point a portion of the fabric. There exists no such plate or flat surface or finger in King's machine. It seems impossible to hold that this flat surface, this pointed finger whose force is dependent on a spring, are the mechanical equivalents of the double-plated semi-cylinder of King's guide. If this be so, it is because King's patent covers every method which can be invented for presenting the material to the flutingrollers in such a manner as to create a redundancy to be made into puffs. This is not claimed; and, if claimed, the claim would be fatal to the patent.
We are of opinion that the machine of Werner, and its use by him, is no infringement of King's, and the decision of the Circuit Court will, therefore, be reversed, and the case remanded with directions to dismiss the bill; and it is
So ordered.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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